At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner's primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date of the reference. The Board determined that Patent Owner's evidence was insufficient. Patent Owner appealed the Final Written Decision. During an unrelated remand, Patent Owner petitioned the USPTO for certificates of correction to add an inventor to the asserted patents. Thereafter, Patent Owner appealed again. Then, the Federal Circuit remanded after the USPTO granted Patent Owner's petitions for certificates of correction, for determination of whether the change in inventorship changed the Board's determination in its Final Written Decision.
The first question the Board evaluated was whether a change in inventorship under § 256 has a retroactive effect. The Board sided with Patent Owner here, reasoning that the plain language of the statue supports that certificate of corrections can have a retroactive effect on inventorship under 35 U.S.C. § 256. In doing so, the Board rejected Petitioner's argument that § 256 only applies retroactively to § 102(f) issues.
Next, the Board evaluated whether judicial estoppel applied to preclude the retroactive effect of § 256. The Board considered three factors. First, whether the party takes a later position that is "clearly inconsistent" with an earlier position. The Board found that the Patent Owner's positions had changed from trial in an attempt to reflect the Board's determinations. The Board noted that this factor favored judicial estoppel being met because the Board's determination was a factual one. Contrarily, the Board noted, that in the case law cited by Patent Owner, where a court's determination set aside judicial estoppel, the court's determination was legal.
The second factor, which the Board found also favored judicial estoppel, is whether the party succeeds in persuading a court to adopt the earlier position. Here, Patent Owner attempted to convince the Board of the previous inventorship at trial, and although the Board did not rule for Patent Owner based on those representations, the Board adopted and relied on Patent Owner's position at trial.
The third factor is whether the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped. The Board found that this factor was met as well because of the additional expenditure that would be needed by Petitioner if the Board allowed the new inventorship theory.
After looking at the factors, the Board found that judicial estoppel applied. In this finding, the Board noted that the Federal Circuit has acknowledged that judicial estoppel can be applied before an administrative tribunal. Independently, the Board also found that Patent Owner waived its right to revised inventorship by not raising them during the first trial proceedings.
Takeaway: A Patent Owner should make sure inventorship is correct at a trial before the Board issues any Final Written Decision.
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