[co-author: Ruth Brindel]*

In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent another loss for Salesforce following a decade of legal efforts to strike down patents assigned to Applications in Internet Time, LLC (“AIT”). Ex parte Reexamination of U.S. Patent No. 8,484,111, 90/019,069, Decision on Petitions (USPTO, May 25, 2023); Ex parte Reexamination of U.S. Patent No. 7,356,482, 90/019,070, Decision on Petitions (USPTO, May 25, 2023).

RPX had previously filed two IPR petitions challenging claims of AIT’s patents. The Patent Trial and Appeal Board (“PTAB”) instituted IPRs, issued final written decisions, and concluded that numerous claims were unpatentable. On appeal, the Federal Circuit vacated the final written decisions and remanded for a determination of whether Salesforce was a real party in interest. On remand, the PTAB terminated both IPRs upon finding that Salesforce was a real party in interest and the IPRs were time barred. Subsequently, Salesforce filed requests for reexamination of AIT’s patents.

In the reexamination proceedings, the parties disputed whether the prior IPRs initiated by RPX estopped the reexamination proceedings brought by Salesforce under 35 U.S.C. § 315(e)(1). That section limits petitioners and real parties in interest in an IPR proceeding that resulted in a final written decision from challenging in the USPTO claims on any ground that was raised or reasonably could have been raised during the IPR proceeding.

In determining whether estoppel applied, the USPTO first considered whether Salesforce was a real party in interest to the IPRs initiated by RPX. Acknowledging that the PTAB previously found Salesforce was a real party in interest and that Salesforce did not contest this issue on reexamination, the USPTO found that this element of estoppel was satisfied.

As the grounds in the reexamination were not identical to the grounds in the IPRs, the USPTO evaluated whether the reexamination grounds “reasonably could have been raised” in the IPRs. Although many of the cited references overlapped between the proceedings, the reexamination grounds cited two additional prior art references. The USPTO determined that a skilled searcher reasonably could have been expected to discover those references without requiring a “scorched-earth search” due, in part, to their availability on commercial databases. Thus, the USPTO found that the grounds presented in the reexaminations reasonably could have been raised in the IPRs.

Perhaps most notably, the USPTO was tasked with the infrequent consideration of whether a final written decision that was vacated implicates estoppel under § 315(e)(1). Relying on Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035 (Fed. Cir. 2022), in which the Federal Circuit found that estoppel is effective once an IPR concludes with issuance of a final written decision, the USPTO determined that the fact that the Federal Circuit later vacated the final written decisions at issue here did not negate the estoppel effect that applied upon the issuance of the final written decisions. Thus, the USPTO concluded that estoppel applied and, accordingly, terminated the reexamination proceedings.

Takeaway

These decisions provide increased certainty as to how the USPTO interprets the scope of estoppel under § 315(e)(1). Specifically, a final written decision in an IPR can provide the basis for estoppel in a reexamination proceeding, as well as in another IPR proceeding. Moreover, petitioners and real parties in interest should be aware that the USPTO may apply estoppel based on a final written decision whether or not it has been vacated.

*Summer Associate in Jones Day’s Chicago Office.