Reprinted with Permission from Law360
What The Fed Circ. Says About IPR Estoppel
Law360, New York (September 23, 2016, 12:52 PM ET) --
The inter partes review estoppel provision (35 U.S.C. § 315(e)) says that a petitioner (or real party in interest) in an IPR
that results in a final written decision on a patent claim may not assert validity in a U.S. Patent and
Trademark Office proceeding, a civil action, or before the U.S. International Trade Commission with
respect to that claim “on any ground that the petitioner raised or reasonably could have raised during
the inter partes review.”
Based on this statutory language, many courts, commentators and practitioners have assumed that th e
IPR estoppel would be interpreted broadly, such that a final written decision on a claim would give
rise to far-reaching estoppel of future invalidity arguments relating to that claim. See, e.g., Star
Envirotech Inc. v. Redline Detection LLC, Case No. 12-01861, 2015 WL 4744394, at *3-4 (C.D. Cal.
Jan. 29, 2015) (evaluating whether to strike defendants’ invalidity contentions because they relied in
part on printed publications that could have been raised in an IPR petition). This conservative
interpretation is perhaps underscored by other sections of the America Invents Act. The IPR estoppel
language is broader, for example, than the corresponding statutory language setting forth the estoppel
that results from a final written decision in a covered business method proceeding. The CBM provision
precludes the petitioner from asserting, in a civil action or ITC proceeding, invalidity based on “any
ground that the petitioner raised” during the CBM proceeding.
Assuming that 35 U.S.C. § 315(e) will be interpreted broadly — perhaps so broadly as to estop all invalidity arguments
based on 35 U.S.C. §§ 102, 103 “on the basis of prior art consisting of patents or printed publications” (see 35 U.S.C. §
311(b)) — has undoubtedly impacted strategy decisions of defendants in determining of whether and when to file IPR
petitions in response to allegations of patent infringement or during parallel litigation. If the potential estoppel is not as
broad as previously assumed, however, then there is less risk to those defendants of raising an invalidity challenge before
the Patent Trial and Appeal Board.
While the exact scope of the estoppel created by § 315(e) has not been decided by the Federal Circuit, the is sue has been
raised by parties to appellate proceedings, and both the PTO and the Federal Circuit have had the opportunity to comment.
In those proceedings, both the Federal Circuit and the PTO have indicated that Section 315(e)’s estoppel might be
narrower than many previously assumed. In fact, the Federal Circuit appears to interpret “raised or th at could have raised”
not to estop subsequent challenges at least on grounds that were raised by the petitioner in its IPR petition but not
instituted by the PTO in the IPR proceedings.
For example, in Schott Gemtron Corp. v. SSW Holding Co., Case No. 2015-1073 (Fed. Cir.), Schott petitioned the PTAB
to review certain claims of a patent that was asserted against Schott in parallel litigation. The IPR petition relied on nine
Gregory Lantier
Mindy Sooter
