Courts Apply More Flexible Analysis To PTAB Estoppel

Reasonably Could Have Raised & Reasonably Diligent

Prior to last year's SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel. However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not. In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner.

In GREE, Inc. v. Supercell Oy, Supercell Oy filed a petition for PGR of a GREE patent. Supercell Oy challenged claims only on § 101 grounds, and the PTAB found some claims ineligible and others eligible. GREE later asserted the eligible claims in the Eastern District of Texas and Supercell Oy raised an affirmative defense of invalidity. Two weeks back, EDTX issued a memorandum order (here) in response to