As recently as 2018, there was uncertainty about the scope of inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2). Under a broad interpretation, IPR estoppel precludes petitioners from asserting in a district court any grounds raised or that could have been raised in their IPR petitions. A narrower interpretation is that petitioners are precluded from asserting only those grounds that the Patent Trial and Appeal Board (PTAB) actually reviewed. Although the issue has not been definitively resolved, a clear consensus has emerged in favor of broader estoppel – the grounds raised or that could have been raised in the IPR petition define the scope of IPR estoppel.
BackgroundIPR estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e). In the past, a patent office regulation allowed the PTAB to pick which, if any, grounds might be considered during an IPR review. As a result, the grounds that a petitioner “could have raised during” the review were arguably limited to those the PTAB had chosen to consider. For example, in the underlying IPR at issue in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293, 1299-1300 (Fed. Cir. 2016), the PTAB instituted on just some of the grounds in the petition. The Federal Circuit found that the resulting estoppel did not apply to the grounds on which review was denied. As the court explained in a later opinion, “the non-instituted grounds do not become a part of the IPR. Accordingly, the non-instituted grounds were not raised and, as review was denied, could not be raised in the IPR. Therefore, the estoppel provisions of § 315(e)(1) do not apply.” HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016) (citing Shaw, 817 F.3d at 1299-1300).
In the aftermath of Shaw, some district courts extended its holding beyond partial institutions. These courts reasoned that Shaw’s holding equally applied to grounds not raised in a petition, as those “grounds could not reasonably have been raised during IPR because during IPR, the PTAB has already selected the specific invalidity grounds for consideration through its grant of the IPR petition.” Cal. Inst. of Tech. v. Broadcom Ltd., 2018 WL 7456042, at *4 (C.D. Cal. Dec. 28, 2018) (describing analysis of narrow cases); see also Verinata Health, Inc. v. Ariosa Diagnostics, Inc., 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017). Other courts, however...
