Takeaway: In determining whether a ground reasonably could have been raised in an earlier proceeding and the petitioner is estopped from asserting that ground, the Board does not look to whether the petitioner had knowledge of the prior art, but rather whether that prior art could have been discovered by a skilled searcher doing a diligent prior art search. 

In its Order, the Board granted Patent Owner’s Motion to Terminate the Inter Partes Review. Patent Owner sought termination because on September 23, 2015, a final written decision was issued pursuant to 35 U.S.C. § 318(a) in International Business Machines Corp. v. Intellectual Ventures II, LLC, IPR2014-00587 (“the prior proceeding”). Patent Owner argued that Petitioner is estopped from maintaining this proceeding pursuant to § 315(e)(1) because Petitioner reasonably could have raised the sole ground of this proceeding during the prior proceeding. In both proceedings, Petitioner challenged the sole claim of the ’694 Patent. Petitioner argued that the sole ground in this proceeding could not have been reasonably raised in the prior proceeding, and that even if Petitioner is estopped, the proceeding should not be terminated and should continue without a petitioner. 

The Board first determined whether Petitioner reasonably could have raised the sole ground of review – anticipation by Estrin 1987 – in the prior proceeding. Patent Owner argued that Estrin 1987 is a publication that a skilled searcher could have reasonably discovered, and that Petitioner’s declarant testified that he assisted with prior art searching and obtained a copy of Estrin 1987 in 1988. Petitioner asserted that the relevant question is not whether it could have reasonably found Estrin 1987, but rather whether it could have reasonably raised Estrin 1987 in the prior proceeding. Petitioner argued that it could not have because it could not have anticipated that Patent Owner would have made certain arguments in its preliminary response in the prior proceeding that “opened the door” to Petitioner asserting Estrin 1987 in this proceeding. Petitioner also argued that there is no evidence that it knew about Estrin 1987 when it filed the earlier proceeding.

The Board found that Petitioner reasonably could have raised Estrin 1987 in the earlier proceeding and is estopped from maintaining this proceeding. The Board noted that the legislative history of the AIA defines “could have been raised” to include “prior art which a skilled searcher conducing a diligent search reasonably could have been expected to discover.” The Board found that there was sufficient evidence that a skilled searcher conducting a diligent search would have uncovered Estrin 1987. The Board noted that “what reasonably could have been raised” is not limited to art of which the petitioner was aware. The Board was also not persuaded by Petitioner’s argument that the prior proceeding opened the door for an assertion of Estrin 1987 because Petitioner did not provide any authority to support its contention and the focus is on what could have been discovered in a search.

The Board then turned to whether it should terminate the proceeding. Patent Owner argued that, once a petitioner is estopped, the proceeding should be terminated because Congress intended to limit serial attacks on patents. The Board acknowledged a nonprecedential Federal Circuit opinion, Progressive Casualty Insurance Co. v. Liberty Mutual Insurance Co., holding that in a covered business method review the estoppel provision does not prevent the Board from reaching a decision, but stated that this case does not mandate that the Board reach a final decision. Further, Patent Owner argued that even if the Board could continue the proceeding, it should terminate it in its discretion because oral hearing has not yet occurred. Petitioner asserted that even if it is estopped, neither the statute nor the Board rules mandate termination, and Petitioner cited to proceedings where the Board issued a final written decision, but no petitioner remained as a result of a settlement. The Board acknowledged Progressive and the fact that there is no prohibition from reaching a final written decision where estoppel has prevented a petitioner from continuing in a proceeding, but also noted that there is nothing mandating that the Board reach a final written decision. The Board found that the best means of securing the just, speedy, and inexpensive resolution of the proceeding is to terminate the proceeding.

International Business Machines Corp. v. Intellectual Ventures II LLC, IPR2014-01465
Paper 32: Order Terminating Inter Partes Review
Dated: November 6, 2015
Patent 6,826,694 B1
Before: James T. Moore, Meredith C. Petravick, and Benjamin D.M. Wood
Written by: Petravick