Before Prost, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board (PTAB).
Summary: Interference estoppel does not apply when the interference was terminated due to a threshold issue.
Zynga petitioned for inter partes review (IPR) of an IGT patent after having attacked the same patent via an interference proceeding. IGT opposed, arguing interference estoppel under 37 C.F.R. § 41.127(a)(1). Because the interference proceeding was terminated on a threshold issue and the IPR petition relied on a combination of prior art references not used in the interference proceeding, the PTAB declined to apply interference estoppel. The PTAB ultimately concluded that IGT’s claims were obvious. IGT appealed.
The Federal Circuit affirmed, finding that the decision not to apply interference estoppel was related to the decision to institute the IPR and therefore unreviewable. The court reasoned that the PTO Director is afforded discretion regarding whether to institute an IPR. The decision to institute an IPR is generally unreviewable unless the PTO has violated legal constraints or engaged in other “shenanigans.”
The Federal Circuit found the PTAB’s reasoning for not applying interference estoppel sufficient to support a finding of no “shenanigans,” and that no exceptions applied to the general bar on reviewability of institution determinations. The court further affirmed the PTAB’s finding on obviousness.
Editor: Sean Murray
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