PGR Estoppel Continues to be Broad and Onerous

By Hannah Mehrle and Josh Nightingale –

An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC.  Under Section 325(e)(2) of the AIA “[t]he petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision… may not assert either in a civil action … or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” 35 U.S.C. § 325(e)(2).  In cases that interpret similar language under the AIA regarding inter partes review, courts have held that the phrase “reasonably could have raised” refers to prior art that the petitioner actually knew about or that a skilled searcher conducting a diligent search would have been reasonably expected to discover.

Here, the co-founder of Respondent admitted that he was aware of the products, and that the products were discovered in a prior art search when preparing to file the PGR.  However, the products were not identified in any of the PGR petitions.  The respondent argued that he could not have raised the products in the PGR because relevant details regarding the products and how the products operated were not publicly available.  Respondent argued that it could not identify the products in the petition for post grant review because it did not have evidence that each element of a claim was present, and accordingly, no estoppel should apply.  Traeger (Complainant) argued that estoppel is appropriate because petitioners for post-grant review are required to conduct a reasonably diligent search for prior art before filing.  Complainant further argued that Respondent knew of the products for years, did not even obtain a sample, and that Respondent could have used technology to ascertain how the products worked if Respondent had sample products.  Additionally, Complainant argued that the PTAB had subpoena power that would have enabled Respondent obtain confidential information on the products if necessary.

The ALJ found that Respondent was estopped from asserting invalidity based on the products.  There was no dispute that the products were known to Respondent, but nevertheless, Respondent did not include the products in its petition.  The ALJ found that Respondent was not diligent in finding more information, especially because Respondent did not purchase and inspect the products.  Additionally, the ALJ observed that several other references in Respondent’s PGR petition disclosed less than all of the limitations of the asserted claims.  Based on this, the ALJ stated that Respondent could have put the products in its petition even without all the information needed.  Accordingly, the ALJ found that Respondent was estopped from raising the products in the ITC.

Takeaway:  If you are considering a PGR, make sure you investigate all potential prior-art products for use in the petition.