The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain, PTAB Litigation Blog

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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.

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