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Author Topic: Theoretical IPR question  (Read 312 times)

cheesepep

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Theoretical IPR question
« on: 07-14-17 at 05:16 am »

Ok, suppose A sues B for patent infringement for patent C that A owns.

B files for petition for IPR in the USPTO. The USPTO denies the petition for IPR for some reasons.

Can party D knowing this information file for another IPR review using different prior art? I suppose so, just want to confirm
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MYK

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Re: Theoretical IPR question
« Reply #1 on: 07-14-17 at 06:37 am »

Sure.  IPR has no estoppel against nonparties.  D might have done a better search, or have a better understanding of the prior art.  I believe that D can even file using the same prior art as B -- I know that's true of ex parte reexams, and I assume the same holds true of inter partes review, otherwise companies could abuse the system to "immunize" against prior art by having third parties file badly-done IPR proceedings.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

fewyearsin

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Re: Theoretical IPR question
« Reply #2 on: 07-14-17 at 02:07 pm »

Sure.  IPR has no estoppel against nonparties.  D might have done a better search, or have a better understanding of the prior art.  I believe that D can even file using the same prior art as B -- I know that's true of ex parte reexams, and I assume the same holds true of inter partes review, otherwise companies could abuse the system to "immunize" against prior art by having third parties file badly-done IPR proceedings.
This is one of the big complaints about the IPR system - the ability for anyone at almost any time to challenge your patent, requiring you to defend and re-defend your right or risk losing it, means that there is very little "quiet" title to your invention.
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MYK

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Re: Theoretical IPR question
« Reply #3 on: 07-14-17 at 11:31 pm »

That was/is true under the ex parte and old inter partes reexam systems too, though.  And in court, any infringer is going to try to invalidate the patent.  "Quiet title" sounds great until the major corporations start gaming the system by getting friendly third parties to help them out.  (I was thinking about doing that as a business model for the qui tam action for false marking, up until Obama "reformed" that into oblivion. :) )
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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