PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

| Benjamin Anger

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company brochures as prior art in a follow-on IPR petition. The PTAB held that at the time of JM’s earlier IPR petition, the brochures would not have been found by a reasonably skilled searcher conducting a diligent search.

JM filed its second IPR petition challenging the sole claim of a design patent related to mineral fiber insulation based on anticipation or obviousness over JM’s brochures. Knauf filed a motion to terminate, arguing that because a final written decision was entered in the prior IPR, JM was estopped from maintaining its second IPR. Knauf asserted that because an employee of JM had the brochures in his possession, a reasonably diligent search by JM would have uncovered the brochures for use in the first IPR.

JM countered, and the PTAB agreed, that a skilled researcher conducting a reasonably diligent search could not have been expected to discover the brochures prior to filing the earlier IPR. JM argued that 1) JM did not find the brochures after thirty employee interviews and a professional search of the Internet Archive; 2) JM found the brochures only after a personnel change triggered an interview of the employee in possession of the brochures after filing the earlier IPR; and 3) the employee maintained the possession of the brochures in an unstructured collection of binders and against the company’s document retention policy.

Knauf also challenged the public accessibility of the brochures, but the PTAB found that the brochures were “publicly accessible” and thus available as prior art. The date stamps on the brochures indicated, according to JM, when the brochures would have been printed, and shortly thereafter, disseminated to customers. JM offered evidence that during the relevant time period such brochures were freely distributed on a non-confidential basis to the public.

Ultimately, however, the PTAB found for Knauf on the merits and upheld the patentability of Knauf’s patent as not anticipated or obvious over the brochures.