By Carl Kukkonen

In Zynga Inc. v. IGT, IPR2022-00199, the USPTO Director, Kathi Vidal, sua sponte granted review and affirmed the decision instituting trial over patent owner’s argument that the Board erred in its application of interference estoppel with regard to U.S. Pat. No. 7,168,099 related to secure communications for networked video game software.

In this matter, the USPTO received a Rehearing Request and a request for Precedential Opinion Panel (POP) review from the Patent Owner challenging the Institution Decision of the PTAB. In its requests, the Patent Owner argued that the Board improperly waived interference estoppel under 37 C.F.R. § 41.127(a)(1) to determine that Petitioner is not barred from pursuing inter partes review of U.S. Patent 7,168,089.

The Patent Owner’s Rehearing Request cited the following language from the Institution Decision:

Accordingly, to the extent Section 41.127(a)(1) applies, pursuant to 37 C.F.R. § 42.5(b), we waive the requirements of Section 41.127(a)(1) as applied to Zynga’s unpatentability challenges in this proceeding. See 37 C.F.R. 42.5(b) (“The Board may waive or suspend a requirement of parts 1, 41, and 42 and may place conditions on the waiver or suspension.”).

The Patent Owner asked the Precedential Opinion Panel to resolve the following issue which the Patent Owner submits is of precedential importance:

May the Board retroactively waive the scope and effect of a final judgment resulting from a prior interference proceeding?

Director Vidal intervened determined that sua sponte Director review of the Board’s Decision wasappropriate after reviewing the Board’s Decision, the Papers, and the Exhibits of record.

The Director ultimately affirmed the Board’s result that Petitioner should not be barred from pursuing inter partes review based on interference estoppel. Also of note, the Director did not consider the issue of whether the Board properly waived interference estoppel.

The Director stated: “Even if interference estoppel under 37 C.F.R. § 41.127(a)(1) applied to trial and preliminary proceedings before the Board, such estoppel would not apply here because the Board terminated the interference based on the threshold issue of written description… In doing so, the Board dismissed as moot Petitioner’s motions asserting unpatentability over prior art and did not authorize any motion or make any determination on unpatentability under 35 U.S.C. §§ 102–103…. As a result, interference estoppel would not apply because the Board’s termination based on a threshold issue prevents the judgment from disposing of all issues that were, or by motion could have properly been, raised and decided.”

The Director’s Decision remanded the matter to the original merits panel for further proceedings consistent with the Decision.

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An acknowledged leader in the profession, Carl Kukkonen has nearly 20 years of experience in strategic intellectual property counseling. He advises clients on patent infringement and validity, preparation and prosecution of patent applications, and brand protection matters.