In This Issue:

- After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?

- When You Don’t Know What You Know: The Role of Unappreciated Inherency in the Obviousness Analysis

- Software Patents Are Still Very Useful Despite Alice, But Are Business Method Patents?

- “Blurred Lines” Artists Lose Multi-million Dollar Copyright Lawsuit

- Supreme Court Holds that Issue Preclusion May Apply to TTAB Decisions

- Excerpt from After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?:

The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered business method review (IPR, PGR, and CBM, respectively). The AIA also provided explicit estoppel provisions with respect to District Court litigation for those proceedings.

However, as far as District Court litigation goes, these provisions all run against the patent challenger (the Petitioner) in the PTAB proceeding. After an IPR or PGR proceeding, these provisions prevent a Petitioner from asserting in District Court that a claim is invalid on any “ground” that the petitioner “raised or reasonably could have raised during [the IPR or PGR].” For CBM proceedings, the estoppel is even more limited—to grounds the Petitioner actually raised. None of these provisions apply to the patentee. Nor do they clearly state that this is the only estoppel/preclusive effect that PTAB decisions will be given in District Court litigation. Indeed, the recent Supreme Court decision in B&B Hardware, Inc., v. Hargus Indus., Inc., suggests that there may be additional impacts of estoppel on District Court litigation beyond the explicit estoppel provisions in the AIA.