Addressing the pre-AIA estoppel provision of 35 USC §
317(b), the US Court of Appeals for the Federal Circuit affirmed a
Patent Trial and Appeal Board (PTAB) decision not to terminate all
pending re-examinations of a patent after the party that requested
one of the re-examinations received an adverse ruling as to
specific claims of that patent in a co-pending litigation. In
re: Affinity Labs of Texas, LLC, Case Nos. 16-1092; -1172 (Fed
Cir., May 5, 2017) (Chen, J).
Section 317(b) states:
Once a final decision is entered
against a party in a civil action . . . that the party has not
sustained its burden of proving invalidity of a patent claim in
suit . . . then neither that party nor its privies may thereafter
request an inter partes reexamination of any such patent
claim on the basis of issues which that party or its privies raised
or could have raised in the civil action . . . and an inter
partes reexamination requested by that party or its privies on
the basis
