How ITC Applied Inter Partes Review Estoppel In Ford Case

Law360, December 1, 2017, 1:53 PM EST -- In Certain Hybrid Electric Vehicles and Components Thereof, Administrative Law Judge David P. Shaw issued an initial determination estopping The Ford Motor Company from challenging the validity of Paice LLC’s patents using the same grounds that Ford had previously raised before the Patent Trial and Appeal Board in inter partes reviews. The potentially unusual issue here, though, is that Ford won the IPRs, successfully invalidating 272 of Paice’s claims. At issue in Certain Hybrid Vehicles were eight patent claims. Six of those claims had been held invalid at the PTAB and were on appeal to the Federal Circuit. One claim had been found valid at the PTAB, and one claim had been found invalid, but the Federal Circuit had vacated and remanded that determination. Relying on a strict reading of the IPR estoppel provision, ALJ Shaw found that it was irrelevant to the estoppel determination that Ford had been successful at the PTAB. Stated differently, ALJ Shaw concluded that the estoppel provision applies after a final decision on both successful and unsuccessful IPRs. This initial determination appears significant because (1) it continues the trend of the U.S. International Trade Commission issuing patent owner-friendly rulings in spite of conflicting PTAB rulings, and (2) the decision may flag a provision of the America Invents Act for clarification by the Federal Circuit on appeal or by Congress.