37 C.F.R. § 42.73(a), which provides that “[a] judgment, except in the case of a termination, disposes of all issues that were, or by motion reasonably could have been, raised and decided” relates to the effect of a judgment in the particular proceedings in which the judgment is rendered but does not apply to other proceedings (even proceedings involving the same parties).
Res judicata does not apply to bar a patent owner from reasserting an issue/”defense” (e.g., § 315(b) one-year time bar) that the patent owner previously asserted unsuccessfully in the context of prior IPR proceedings involving the same petitioner and patent where the claims challenged in the IPR petition at issue were not part of the prior IPR proceedings and the petition at issue is based on different grounds (because the subsequent IPR would not satisfy the third prong of the res judicata test – “the second claim is based on the same set of transactional facts as the first.”)
The Board might grant discovery of relevant indemnification agreements in connection with a patent owner’s argument that a petition is barred under § 315(b) due to privity. Continue reading “Arris Group, Inc. v. C-Cation Technologies, LLC, Case IPR2015-00635 (May 1, 2015) (Paper 10)”