There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1305 (Fed. Cir. 2016) (Reyna, J., concurring). For IPR petitions that result in a final written decision, the America Invents Act prohibits the petitioner from asserting invalidity in a civil action “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e)(2). Although the statutory estoppel language is seemingly straightforward, the issue of whether a petitioner “reasonably could have raised” a prior art ground during the IPR remains a source of uncertainty.
Recall that, in Shaw , the Federal Circuit ruled that estoppel does not attach to non-instituted grounds—that is, grounds raised by the petitioner in an IPR petition but not instituted for review by the PTAB. Shaw, 817 F.3d at 1300; see also prior post on Shaw. The Court reasoned that the petitioner “did not raise—nor could it have reasonably raised—the [non-instituted] ground during the IPR,” because “[t]he IPR does not begin until it is instituted.” Id. (emphasis added). The Federal Circuit’s holding in Shaw was thus directed to non-instituted grounds. But what about prior art grounds not put forward by the petitioner in an IPR petition? Lower courts have reached differing conclusions about whether the reasoning of Shaw also extends to grounds not raised in the IPR petition (“non-petitioned grounds”).
Recently, in Koninklijke Philips N.V. v. Wangs Alliance Corp., the district court addressed the scope of estoppel with respect to non-petitioned grounds. No. CV 14-12298-DJC, 2018 WL 283893 (D. Mass. Jan. 2, 2018). In a motion for summary judgment, the plaintiffs argued that the defendant “reasonably could have raised” grounds in its IPR petition based on prior art references that the defendant had identified in invalidity contentions served in the underlying litigation before the petition was filed with the PTAB. In reaching its decision, the district court focused on “whether the phrase ‘during inter partes review’ means only that portion of the IPR proceedings after the review is instituted, or whether it means the entirety of the IPR proceedings, including the initial filing of the petition.” Id. at *3. Although the court found “much appeal in a broader reading of the...
