CAFC addresses estoppel issues in IPRs in Shaw v. Automated Creel
This case touched on procedural matters in IPRs:
We can see benefit in the PTO having the ability to
institute IPR on only some of the claims and on only some
of the proposed grounds, particularly given the Board’s
statutory obligation to complete proceedings in a timely
and efficient manner. 35 U.S.C. § 316. For example, in
Liberty Mutual Insurance Co. v. Progressive Casualty
Insurance Co., No. CBM2012-00003, 2012 WL 9494791, at
*1 (P.T.A.B. Oct. 25, 2012), the petitioner presented over
four-hundred grounds of unpatentability for twenty
patent claims. The Board determined that “numerous
redundant grounds would place a significant burden on
the Patent Owner and the Board, and would cause unnecessary
delays.” Id. (...)
The Board made specific findings that certain
groups of grounds were redundant. It ordered the Petitioner
to choose which ground in each group to maintain,
and even explained which ground it would proceed with if
the Petitioner did not choose. The PTO has made similar
constraints in prosecution by requiring applicants to
narrow the number of claims they wish to prosecute. See,
e.g., Hyatt v. U.S. Patent & Trademark Office, 797 F.3d
1374, 1376 (Fed. Cir. 2015) (discussing the PTO’s requirement
that the patentee select some of the hundreds
of thousands of claims to prosecute, absent a showing that
more claims were necessary).
The importance of the word "during":
We agree with the
PTO that § 315(e) would not estop Shaw from bringing its
Payne-based arguments in either the PTO or the district
courts. Both parts of § 315(e) create estoppel for arguments
“on any ground that the petitioner raised or reasonably
could have raised during that inter partes
review.” Shaw raised its Payne-based ground in its
petition for IPR. But the PTO denied the petition as to
that ground, thus no IPR was instituted on that ground.
The IPR does not begin until it is instituted. See Cuozzo,
793 F.3d at 1272 (“IPRs proceed in two phases. In the
first phase, the PTO determines whether to institute IPR.
In the second phase, the Board conducts the IPR proceeding
and issues a final decision.” (citations omitted)).
Thus, Shaw did not raise—nor could it have reasonably
raised—the Payne-based ground during the IPR. The
plain language of the statute prohibits the application of
estoppel under these circumstances. In light of our construction
of the statute, mandamus is not warranted.
Thus, we deny Shaw’s petition for writ of mandamus.