PTAB Issues Representative Decision On Scope Of Estoppel In IPR Proceedings

The Patent Trial and Appeal Board (the Board) at the U.S. Patent and Trademark Office (USPTO) recently issued a decision interpreting the estoppel provisions of 35 U.S.C. §315(e)(1) in inter partes review (IPR) proceedings. See Dell Inc. v. Electronics and Telecommunications Research Institute, IPR2015-00549 (PTAB, Paper 10, March 26, 2015).

The decision is one of only a handful of institution decisions that have been designated as "representative" by the Board. Under the Board's standard operating procedures, the "representative" designation is used to bring a decision to the attention of the public from among the numerous "routine" decisions issued by the Board.

In Dell, the petitioner sought inter partes review of claims 1-9 of U.S. Patent No. 6,978,346 (the '346 patent) on the ground that the claims would have been obvious over a combination of the Mylex and Hathorn references. The same petitioner had previously sought inter partes review of the same patent