Administrative Estoppel
May 28, 2015
Estoppel/Preclusion Generally
• Elements of Collateral Estoppel / Res
Judicata:
– A right, question, or fact
– in issue and determined
– by a court of competent jurisdiction
– cannot be disputed in a subsequent suit
– between the same parties or their privies.
• Montana v. United States (U.S. 1979)
• “res judicata” = “claim preclusion”
• “collateral estoppel” = “issue preclusion”
Administrative Estoppel Generally
• “When an administrative agency is acting in a
judicial capacity and resolves disputed issues
of fact properly before it which the parties
have had an adequate opportunity to litigate,
the courts have not hesitated to apply res
judicata to enforce repose.”
– U.S. v. Utah Constr. & Mining (U.S. 1966)
B&B Hardware v. Hargis Indus. (US Mar 24)
• “So long as the other ordinary elements of
issue preclusion are met, when the uses
adjudicated by the TTAB are materially the
same as those before the district court, issue
preclusion should apply.”
• Potential for material difference between
marketplace and application usages?
Procedural Set-Up
Patent
Infringement
Defendant
Procedural Set-Up
Patent
Infringement
Defendant
Reexam/IPR/PGR
Patent
Petitioner
or
Requestor
Procedural Set-Up
Patent
Infringement
Defendant
Reexam/IPR/PGR
Patent
RE
Petitioner
or
Requestor
CON
CIP
Statutory Petitioner Estoppel – IPR/PGR
• Petitioner barred from later challenging on
grounds “raised or reasonably could have
raised.” 35 USC 315, 325.
• Scope unclear. Legislative History:
– “Adding the modifier ‘reasonably’ ensures that
could-have-raised estoppel extends only to that
prior art which a skilled searcher conducting a
diligent search reasonably could have been
expected to discover.”
• Pending Legislation: Strikes “or reasonably
could have raised” from PGR only.
– Innovation Act of 2015, PATENT Act of 2015
Statutory Petitioner Estoppel – IPR/PGR
• No cases interpret yet. BUT: prior statute
“could-have-raised” for inter partes
reexamination. 35 USC 315(c) (2006).
• Acco Brands v. PC Guardian (ND Cal. 2008)
– Prior art = computer (no publication)
– Statute limits to printed publications
– Could not have been raised. No estoppel.
– FN: “The Court is uncomfortable … [and] not
convinced that defendant could not, somehow,
have gotten the … information to the PTO had it
actually wanted to.”
• Scope of grounds “could” raise for IPR
(102/103/printed) vs. PGR (all).
Statutory Petitioner Estoppel – IPR/PGR
• expressio unis est exclusio alterius
• Callaway Golf v. Kappos (E.D. Va. 2011);
IPRx (35 USC 317(b))
– “Congress’s failure to include a more general
collateral estoppel provision supports the
conclusion that Callaway’s collateral estoppel
has no statutory basis.”
• WABCO Holdings v. Bendix (DNJ 2010)
– “If Congress thought that a third-party requester
in an ex parte reexamination would receive two
bites of the apple …, then it could have estopped
the party in the same way that it does in inter
partes reexaminations. Congress chose not to.”
Petitioner Estoppel – Material Difference?
• “To allow reconsideration of an interlocutory
order based upon the subsequent decision of
another adjudicative tribunal – which was
driven by a different claim construction,
different arguments by the parties, different
evidence, and a different legal standard –
would remove all considerations of finality and
consistency by allowing parties to challenge a
court's ruling whenever that party identifies, in
hindsight, an improved legal argument.”
• Va. Innovation v. Samsung (E.D. Va. 2014)
Patentee Estoppel (IPR/PGR)
• 37 CFR 42.73(d)(3)
• “A [patentee] is precluded from taking action
inconsistent with the adverse judgment,
including obtaining in any patent:
– (i) A claim that is not patentably distinct from a
finally refused or canceled claim; or
– (ii) An amendment of a specification or of a
drawing that was denied during the trial
proceeding, but this provision does not apply to
an application or patent that has a different
written description.”
• Limits continuation practice.
Patentee Estoppel (Interference)
• Two Forms? “by judgment” and “for failure to file
a motion” (cf. waiver; procedural default).
• Biogen v. Japanese Foundation (FC May 7)
• 1993: X loses interference to Y
– DNA sequences encoding hFIF proteins
• 2009: interference declared, but judgment to Y
because same subject matter
– DNA sequences encoding mature hFIF proteins
• 2013: Y wins again, affirmed by FC
– Precursor and mature hFIF proteins
Patentee Estoppel (Interference)
• Biogen v. Japanese Foundation (FC May 7)
• “Estoppel by judgment”: not patentably distinct,
despite:
– restriction requirement;
– Y had additional interferences with third parties with
separate counts for protein and DNA;
– (X did not submit evidence at correct time)
• “Estoppel by failure to file motion,” see MPEP
2308.03, not reached by FC. X had tried, but
failed, to add counts to the prior interferences.
– “Where the prior judgment . . . is not strictly res
judicata . . . That judgment may nonetheless create
an estoppel as to matters actually in issue or points
controverted.” Stoudt (CCPA 1981)
Fix Litigation By Going Back to PTO?
• ArcelorMittal (FC May 12)
– Only independent claim: steel sheet with “a very
high mechanical resistance”
•
•
•
•
1. DCt: tensile strength > 1500 MPa.
2. Reissue filed
3. CAFC affirms claim construction.
4. Reissue: “wherein said mechanical
resistance is in excess of 1000 MPa” in
dependent claim.
• 5. DCt: Claims broadened in reissue = invalid.
• 6. CAFC affirms, claim construction was lawof-the-case. See also Anderson (FC 1998).
Fix Litigation By Going Back to PTO?
• “In situations, where the issue decided in
Court did not invalidate claims, but applies in
one or more respects to the claims being
reexamined, the doctrine of collateral estoppel
may be applied in reexamination to resolve
the issue. For example, where a finding that
reference X meets a limitation of a claim was
necessary to the final decision of the Court
invalidation of claim 5, collateral estoppel
would attach to the same limitation in claim 2,
which was not invalidated (e.g., because claim
2 contained additional limitations not found in
claim 5).” MPEP 2659.
Timing Problems
• Stay of Litigation (separate topic)
– Prejudice, Simplification, Reduction of Burden
• Race to Judgment: Fresenius v. Baxter (FC
2013)
– 1. CAFC Affirms Not Invalid, Remand Damages
– 2. USPTO (Reexam): Invalid
– 3. DCt Enters Final Judgment
– 4. CAFC Affirms Reexam Invalid
– 5. Pending damages (on appeal) extinguished.
• IPR/PGR Estoppel – only effective on “final
written decision” of PTAB.
Administrative Estoppel
May 28, 2015