{"id":1533,"date":"2017-05-05T23:57:20","date_gmt":"2017-05-06T03:57:20","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1533"},"modified":"2017-05-06T09:59:35","modified_gmt":"2017-05-06T13:59:35","slug":"estoppel-under-317b-always-applies-on-a-claim-by-claim-basis-just-like-the-statute-says","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1533","title":{"rendered":"Estoppel Under 317(b) Always Applies on a Claim by Claim Basis, Just Like the Statute Says"},"content":{"rendered":"

In In Re Affinity Labs of Texas, LLC<\/em><\/a>, [2016-1092, 2016-1172] (May 5, 2017) the Federal Circuit\u00a0affirmed the Board’s affirmance of a reexamination determination that all of the claims of\u00a0U.S. Patent No. 7,324,833 was invalid.<\/p>\n

The Board merged two inter partes reexaminations (one of which brought by Volkswagen) and an ex parte reexamination of U.S. Patent No. 7,324,833.Volkswagen subsequently received an adverse final\u00a0judgment in a parallel district court proceeding, upholding\u00a0the validity of claims 28 and 35 of Affinity\u2019s \u2019833\u00a0patent. In response, Affinity petitioned the PTO to vacate\u00a0the entire merged reexamination proceeding, arguing that\u00a0the estoppel provision in pre-America Invents Act (AIA)\u00a035 U.S.C. \u00a7 317(b)1 extends to all parties, not just\u00a0Volkswagen, and all claims challenged in the three reexaminations,\u00a0not just litigated claims 28 and 35. \u00a0The PTO
\ndenied Affinity\u2019s termination request, but it severed the\u00a0Volkswagen reexamination from the merged proceeding\u00a0and held that no rejection could be maintained in that\u00a0reexamination as to the claims at issue in the district court. \u00a0The\u00a0Examiner evaluated the\u00a0Volkswagen reexamination separately from the merged\u00a0King\/Apple reexamination and ultimately issued a Right\u00a0of Appeal Notice in each proceeding, rejecting numerous
\nclaims of the \u2019833 patent as unpatentable, and the PTAB affirmed.<\/p>\n

Affinity argued that the PTO erred in maintaining\u00a0the reexaminations in light of the final decision that\u00a0Volkswagen failed to prove invalidity of two of the patent\u2019s\u00a0claims, which were asserted in the co-pending\u00a0litigation and, therefore, the Board\u2019s decisions in the\u00a0reexaminations should be reversed pursuant to the section\u00a0317(b) estoppel provision.<\/p>\n

Affinity also argued that,\u00a0assuming the reexaminations were properly maintained,\u00a0the Board\u2019s decisions are based on misreadings of the
\nasserted prior art and a misevaluation of Affinity\u2019s objective\u00a0indicia evidence of nonobviousness.<\/p>\n

Because the\u00a0plain language of pre-AIA section 317(b) precludes Affinity\u2019s
\nestoppel argument and because the Board found no error in the\u00a0Board Decision upholding the Examiner\u2019s findings\u00a0of unpatentability as to all claims at issue, the Federal Circuit affirmed.<\/p>\n

Affinity\u00a0argued that\u00a0the\u00a0decision not to terminate all three reexaminations frustrated section 317(b)\u2019s underlying policy goal of preventing duplicative, harassing actions. The Federal Circuit concluded that a
\nstraightforward reading of the plain language of section\u00a0317(b) precludes Affinity\u2019s overly broad conception of the\u00a0estoppel provision, and found no grounds to\u00a0reverse the Board\u2019s final decisions based on section\u00a0317(b).<\/p>\n

The Federal Circuit observed that\u00a0Section 317(b) bars a party from using the inter partes\u00a0reexamination process after a final decision has been
\nentered against that party in a civil action. The Federal Circuit noted that\u00a0(1) it applies to the party in the civil action that\u00a0loses its validity attack against \u201cany patent claim\u201d as well\u00a0as the party\u2019s privies; (2) it applies to validity issues\u00a0raised in the civil action or that could have been raised in
\nthat action; (3) unlike section 317(a), it speaks in terms of\u00a0any \u201cpatent claim,\u201d as opposed to the \u201cpatent;\u201d (4) it\u00a0prohibits the losing party and its privies from requesting\u00a0an inter partes reexamination \u201cof any such patent claim;\u201d\u00a0and (5) \u201con the basis of such issues,\u201d it prohibits the PTO\u00a0from \u201cmaintain[ing]\u201d any inter partes reexamination\u00a0requested by the losing\u00a0party. \u00a0The Federal Circuit disagreed with Affinity’s proposed interpretation that the estoppel provision applied differently to maintaining a pending reexamination versus requesting a new reexamination. \u00a0The Federal Circuit held that\u00a0section 317(b) was plainly limited\u00a0the scope of estoppel in all circumstances to only those\u00a0claims actually challenged and for which the requesting\u00a0party received an adverse final decision in the district\u00a0court proceeding. \u00a0The Federal Circuit further found\u00a0no basis in the statute for Affinity\u2019s argument\u00a0that the final decision in the Volkswagen litigation\u00a0should have preclusive effect on the reexaminations\u00a0requested by third parties.<\/p>\n

The Federal Circuit concluded that substantial\u00a0evidence supports the Board\u2019s unpatentability findings as\u00a0to all challenged claims in the merged third party reexaminations, and because\u00a0the claims at issue in the
\nVolkswagen reexamination comprised only a subset of the\u00a0claims in the merged third party reexamination, it declined to address\u00a0the alternative grounds of unpatentability at issue\u00a0in the Volkswagen reexamination appeal.<\/p>\n","protected":false},"excerpt":{"rendered":"

In In Re Affinity Labs of Texas, LLC, [2016-1092, 2016-1172] (May 5, 2017) the Federal Circuit\u00a0affirmed the Board’s affirmance of a reexamination determination that all of the claims of\u00a0U.S. Patent No. 7,324,833 was invalid. The Board merged two inter partes … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[30],"tags":[],"class_list":["post-1533","post","type-post","status-publish","format-standard","hentry","category-reexamination"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1533","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1533"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1533\/revisions"}],"predecessor-version":[{"id":1535,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1533\/revisions\/1535"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1533"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1533"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1533"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}