8 WAYS TO AVOID INTER PARTES
REVIEW ESTOPPEL
By Matthew Kreeger and Michael Guo
Inter partes review has b ecome an enormously
popular method of challenging patents. One
important downside of ling for IPR, however,
is that, if the petitioner loses, it faces an
estoppel that could prevent it from raising
invalidity defenses in t he future. The scope of
that estoppel remains unclear. When the America Invents Act established IPR
ve years ago, most practitioners expected that broad estoppel would apply to
preclude a losing petitioner from later asserting almos t any prior art invalidity
grounds based on patents or printed publications. But recent authority has
raised the possibilit y that a losing petitioner could face much more limited
estoppel. We present in this article some strategies that IPR petitioners can
implement to try to minimize possible estoppel, preserving their ability to raise
invalidity issues in t he future.
WHAT IS AN IPR?
IPR is a proceeding for challenging the validity of patent claims before the
Patent Trial and Appeal Board at the U.S. Patent and Trademark Ofce.
Although there is no standing requirement, IPR petitioners are typically
defendants accused of patent infringement. An IPR petition includes grounds
of anticipation or obviousness based on patents and printed publications. After
the patent holder has an opport unity to le a “prelimina ry response,” the PTA B
decides whet her to institute the proceeding base d on whether the pet itioner
has shown a reasonable likelihood that it would prevail. If instituted, the IPR
then begins, entering the trial phase, during which the part ies le briengs and
motions and participate in oral argument. The PTAB then issues a nal written
decision determining the patentability of the inst ituted claims within one year
after institution, about 18 months after the petition was rst led.
Upon issuance of the nal written decision, 35 U.S.C. § 315(e)(2) estops the
petitioner from asserting in distr ict court “that the claim is invalid on any
ground that the petitioner raised or rea sonably could have raised during that
inter partes review.”
Current Statu s of IPR Estoppel
IPR petitions frequently raise multiple grounds for invalidating a patent, yet the
PTAB generally institutes tria l only as to one or two grounds, declining either
on the merits or for procedural reasons to consider the remai ning grounds.
Courts have considered estoppel as to three types of invalidity ar guments:
Attorney Advertising
continued on page 2
IP NEWSLETTER
MOFO October 2017
EDITORS
Richard S.J. Hung
rhung@mofo.com
Nathan Sabri
nsabri@mofo.com
IN THIS ISSUE
8 Ways To Avoid Inter Partes Review
Estoppel
Page 1
Definition of “User” Unchartered Territory for
512(c) Safe Harbor
Page 4
Asserting Trademarks and Available
Remedies at the ITC
Page 5
Stopping Deceptive Trademark Solicitations
Page 9
CONTRIBUTORS
Paul Goldstein
pgoldstein@mofo.com
Dina Roumiantseva
droumiantseva@mofo.com
Matthew Kreeger
mkreeger@mofo.com
Michael Guo
mguo@mofo.com
Mark Whitaker
mwhitaker@mofo.com
Aaron D. Rauh
arauh@mofo.com
Jennifer Lee Taylor
jtaylor@mofo.com
Sabrina Larson
slarson@mofo.com
Amanda D. Phillips
aphillips@mofo.com
