Inter Partes Estoppel Limited to New or Changed Claim Wording

Scott Daniels | June 27, 2012

The scope of estoppel on an unsuccessful requester in inter partes reexamination was tested yesterday in ScriptPro v. Innovation Associates, Inc., 2012 U.S. Dist. LEXIS 87861.  Under 35 U.S.C. § 315(c), a third party who requests inter partes reexamination “is estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the third-party requester raised or could have raised during the inter partes reexamination proceedings.”  (Emphasis added). 

In yesterday’s decision, the accused infringer Innovation moved for summary judgment that it was not estopped – because of an unsuccessful inter partes reexamination that it had earlier pursued against the patent-in-suit – from asserting that certain claims in the patent were invalid under 35 U.S.C. §112, ¶ 1.  The patent owner ScriptPro opposed, asserting that Innovation could not challenge the validity of claims 1 and 2 because of estoppel: Innovation had been free to, and did in fact, raise § 112 challenges during reexamination, and it was therefore estopped under § 315(c) from raising those defenses in the present litigation. 

Judge Carlos Murguia of Kansas granted Innovation’s motion, allowing it to assert its § 112 defenses.  Judge Murguia began his analysis by noting that the issues in reexamination are limited.  The Patent Office “only examines § 112 requirements as to claim language added during reexamination that is different from original [the] claim language and any language deleted from a claim during reexamination.”  As support, the Judge cited MPEP § 2258 (37 C.F.R. § 1.552) (“a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation”).

Although claims 1 and 2 had been substantively amended during reexamination to overcome prior art, the amendments did not delete from original claims 1 and 2 any claim limitation requiring a plurality of sensors, the claim wording that was the basis for Innovation’s § 112 defenses.  Judge Murguia concluded that Innovation could not have raised § 112 argument based on the lack of a limitation requiring sensors because the reexamination did not involve this wording.  Accordingly, Innovation was not estopped from raising its § 112 defenses now.

 

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