Collateral Estoppel Based on Ex Parte Reexam Found Not Applicable in Final Written Decision IPR2015-00169

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Takeaway: Application of the doctrine of collateral estoppel (issue preclusion)—where a judgment on the merits in a first proceeding precludes relitigation in a second proceeding of issues actually litigated and determined in the first proceeding—requires a final decision in the first proceeding and is discretionary.

In its Final Written Decision, the Board found that Petitioner had not proven that the challenged claims of the ‘167 patent are unpatentable as obvious. The ‘167 patent discloses “edible water-soluble delivery systems in the form of a film composition including a water-soluble polymer, an active component selected from cosmetic agents, pharmaceutical agents, vitamins, bioactive agents and combinations thereof, and at least one anti-tacking agent.” Continue reading

Granting Institution in Part Where Intervening Case Law Was Found Insufficient to Prevent Estoppel as to One Challenged Claim CBM2015-00131

Takeaway:  A petitioner may be estopped from challenging a claim that was raised or reasonably could have been raised in a previous post-grant review, even in the face of intervening case law.

In its Decision granting in part institution of a covered business method patent review, the Board determined that “Petitioner has demonstrated that it is more likely than not that the challenged claims are unpatentable” under 35 U.S.C. § 101.  However, the Board also determined that Petitioner “is estopped from challenging claim 26 in this proceeding,” and instituted review of claims 3–6, 8–14, 16–25, 27–30, and 32–41, but not claim 26, of the ’598 patent.  The ’598 patent “relates to ‘a portable data carrier for storing and paying for data and to computer systems for providing access to data to be stored,’ and the ‘corresponding methods and computer programs.’” Continue reading

Assignor Estoppel and Contractual Bar Were Not Found As Defenses Against An IPR Challenge IPR2015-00781

Takeaway: Patent Owner failed to establish that assignor estoppel is a defense under 35 U.S.C. § 314(a) given that 35 U.S.C. § 111(a) provides a broad statutory mandate that any third party requester may file a request for inter partes reexamination.

In its Decision, the Board granted institution of inter partes review (“IPR”) of claim 16 of the ’113 patent. In a purchase agreement, Petitioner sold Patent Owner to Newell Rubbermaid Inc. The assets sold included the ’113 patent. Patent Owner alleged that the Petition should be denied because: (1) a forum selection clause of the purchase agreement contractually bars Petitioner from pursuing relief at the Patent Office, and (2) the doctrine of assignor estoppel bars Petitioner from challenging the validity of a patent it sold to another company. Continue reading