In Great West Casualty Co. v. Intellectual Ventures II LLC, [IPR2016-01534] (February 15, 2017), the PTAB declined to institute an IPR because petitioners were estopped by their prior challenge to U.S. Patent No. 7,516,177.

The Board noted that the instant petition was the fifth petition filed by Petitioners challenging claims 11–20 of the ’177 patent.  Of the four prior petitions IPR2015-01706 and IPR2015-01707 (“prior completed proceedings”) were the only two of the four petitions for which trial was instituted.  In these, the Board issued final written decisions that claims 11–13 and 15–20 of the ’177 patent were unpatentable.

The current petition is substantively identical to a petition filed by Oracle Corporation and HCC Insurance Holdings, Inc., and Petitioner moved to join the proceedings.

The PTAB began with 35 USC 315(e)(1) which provides that after a final written decision, Petitioner 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 Inter Partes Review.  The PTAB noted that 35 U.S.C. 315(e) applies estoppel on a claim-by-claim basis.

Before the Board, then was the scope of “any ground that the petitioner raised or reasonably could have raised during that Inter Partes Review.”  The current proceeding relied upon the Robinson reference, which was not at issue in the two completed proceedings, which further focused the Board on “reasonably could have raised.”

Petitioner argued that Shaw Industries limited estoppel effect to grounds actually instituted.  The Board disagreed, saying that it was unpersuaded that the words “reasonably could have raised during that Inter Partes Review” from Section 315(e)(1) should be interpreted as limited to grounds actually raised during the prior completed proceedings.  Instead, the Board interpreted Shaw Industries as meaning that estoppel does not apply to any ground of unpatentability that was presented in a petition.

The Board observed:

a petitioner makes an affirmative choice to avail itself of Inter Partes Review only on certain grounds.  That choice, however, comes with consequences, most prominently, that grounds petitioner elects not to raise in its petition for Inter Partes Review may be subject to the consequences of Section 315(e)(1).

The Board next turned to Petitioner’s argument that Robinson is, nevertheless, not a ground that Petitioner “reasonably could have raised” because: (1) Petitioner was unaware of Robinson prior to the filing of the petition in IPR2016-01434 despite an exhaustive, litigation-motivated prior art search; and (2) there is not a shred of evidence suggesting that Robinson could be found in the types of places a diligent prior art searcher.  The Patent Owner, however, identified several searches that would have found Robinson, so the Board concluded that it could have been raised, and thus the Petitioner was estopped.

The Board denied institution at to claims 11-13 and 15-20 because of estoppel, and exercised its discretion not to institute as to claim 14, to which the parties agreed estoppel did not apply.

At least at the Board, estoppel applies to grounds that could have been raised (which does not include grounds presented by for which Board does not institute).