Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO). Less common are scenarios in which prosecution history estoppel may limit a U.S. design patent’s claims. The Federal Circuit’s recent decision in Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co. provides one scenario where prosecution history estoppel for a design patent was a key issue in claim interpretation.
The Patent Trial and Appeal Board (“the Board”) recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices. In this ruling, the Board denies Petitioners’ IPR request under the estoppel provision in 35 U.S.C. § 315(e)(1), which prevents petitioners, real parties-in-interest and privies from challenging an already-adjudicated claim on grounds that were previously raised or could have been previously raised before the Board:
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318 (a), or the real party in interest or privy of the 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. (emphasis added)
The Dell decision presents a straightforward application of 35 U.S.C. § 315(e)(1). In the ‘549 IPR, Dell petitioned for review of U.S. Patent No. 6,978,346 (“the ‘346 Patent”) based on claims 1-9 being obvious under 35 U.S.C. § 103 over the Mylex and Hathorn references. In its decision, the Board explains that Dell had previously asserted both Mylex and Hathorn against the ‘346 Patent in Dell, Inc. v. Electronics and Telecommunications Research Institute, Case IPR2013-00635 (“the ‘635 IPR”). Dell’s ‘635 IPR Petition challenged the ‘346 Patent claims on the following grounds: (1) claims 1–3 and 8 as obvious under 35 U.S.C. § 103(a) over Weygant and Mylex (’635 IPR Pet. 20–23); (2) claims 4 and 9 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and Serviceguard5 (’635 IPR Pet. 23–39); (3) claims 5–7 as obvious under 35 U.S.C. § 103(a) over Weygant, Mylex, and ANSI6 (’635 IPR Pet. 39–45); (4) claims 1–3 and 5–8 as anticipated under 35 U.S.C. § 102(b) by Hathorn (’635 IPR Pet. 45–60). The Board instituted trial in the ‘635 IPR solely on the ground that claims 1-3 and 5-8 were anticipated under 35 U.S.C. § 102 by Hathorn, but ultimately held in its final written decision that these claims were not shown to be unpatentable based on Hathorn.