By: Sue Gerber

While claims among patents in the same family can be very similar, such similarities are not enough for the statutory estoppel provision of 35 U.S.C. §325(e)(1) to apply.  In Telebrands Corp. v. Tinnus Enterprises, LLC, the PTAB interpreted the scope of 35 U.S.C. § 325(e)(1) as it applies to decisions involving similar, but not the exact same, patent claims and held that it applies only to final decisions involving the same patent.  PGR2017-00015 (PTAB March 26, 2018) (Paper 26).

In this case, the PTAB had previously issued a Final Written Decision in PGR2016-00031 involving a related patent and concluded that the challenged claims were not indefinite. See, PGR2016-00031 slip op. at 15. In the current proceeding, the Patent Owner argued that the only issue presented was whether the “press-against” claim language common to the claims in both patents was indefinite.  Given that the Board had previously ruled that this language was not indefinite, the Patent Owner contended that the current proceeding should be terminated.

The Patent Owner advanced two arguments in support of terminating the proceedings.  First, the Patent Owner argued that under Section 325(e)(1), the PTAB’s decision in the related case barred the second proceeding.  Second, the Patent Owner argued that the Board should exercise its discretion to terminate the proceeding and vacate the Decision on Institution because it would conserve resources and reduce the risk of inconsistent judgments.

The Board rejected both arguments.  First, the Board reviewed the language of the statute:

Proceedings before the office. —

The petition in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a) … may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

35 U.S.C. § 325(e)(1) (emphasis added).

The Board found the plain language of Section 325(e)(1) foreclosed the relief sought by the Patent Owner.  It explained that “[a]lthough there may be similarities between the claim of the ’612 patent at issue and the claims [at issue in the prior proceeding], there can be no dispute that no final written decision has issued with respect to any claim of the ’612 patent.  PGR2017-00015, slip op. at 3.  Thus, “under its plain language, §325(e)(1) does not apply.”  Id. (citing Conn. Nat’l Bank v. Germain, 503 U.S. 249, 254 (1992) (“[C]ourts must presume that a legislature says in a statute what it means and means in a statute what it says there … when the words of a statute are unambiguous, then … the judicial inquiry is complete.”).

Second, the Board declined to decide whether it had discretion to terminate proceedings in general, and further declined, given the current circumstances, to terminate the proceedings in this case.  The Board noted that the case was “well along.”  Id.  Briefing was nearly complete, and resources had been expended in the related proceeding concerning the similar claim limitation.  As such, the Board was “not persuaded that any potential savings would be as substantial as the Patent Owner proposes.”  Id.  On the other hand, “termination would ignore the differences that exist between the record in this proceeding and the prior proceeding.”  Id.  The Board cited two declarations of record in the current case that were not submitted in the prior case and noted that the Petitioner had not yet had an opportunity to address this new evidence.  “Thus, interests of fairness and due process weigh heavily against this relief.”  Id. at 4.

Finally, recognizing the Patent Owner’s desire to bring the proceeding to a quick resolution, the Board invited the parties to work together on an expedited schedule that would allow the Board to hold the oral hearing at an earlier date.  In that event, the Board promised “to endeavor to issue our Final Written Decision with all due speed.”

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Sue Gerber is an experienced IP litigator who handles complicated disputes in the district courts and before the Federal Circuit, other Circuit Courts of Appeals, and the United States Supreme Court. Her experience also includes litigating antitrust/unfair competition claims brought in the context of patent infringement litigation.

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