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Estopped or Not? District Court Says No Estoppel for Grounds Not Presented in an IPR Petition, <i>PTAB Litigation Blog</i>

Estopped or Not? District Court Says No Estoppel for Grounds Not Presented in an IPR Petition, PTAB Litigation Blog

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Among the thorny questions for an IPR petitioner is how estoppel may affect invalidity positions asserted by the petitioner/litigant in a parallel district court proceeding, given the grounds of unpatentability asserted by the petitioner in an IPR petition.  The statute provides that a petitioner of an IPR that results in a final decision will be estopped from asserting invalidity in a civil action based on “any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  35 U.S.C. § 315(e)(2).  The statute provides a similar estoppel provision that precludes a petitioner of an IPR that results in a final decision from raising or maintaining a proceeding before the PTO (e.g., another IPR) “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  35 U.S.C. § 315(e)(1).  This question is also a thorny one for district court judges, as reflected by an order dated January 11, 2017 in the United States District Court for the District of Delaware, which held that Toshiba, petitioner of an IPR that came to a final written decision, is not estopped from presenting an invalidity ground at trial against Intellectual Ventures, notwithstanding the fact that the ground could have been presented in Toshiba’s IPR petition but was not.  Intellectual Ventures I LLC et al. v. Toshiba Corporation et al., 1-13-cv-00453 (DED January 11, 2017, Order) (Robinson, USDJ) (“Toshiba Order”).  Judge Robinson found that the Federal Circuit had never addressed this particular fact pattern and decided that, given existing precedent and competing policy considerations, Toshiba would be permitted to present the ground of invalidity at trial “with the hopes that an appeal may clarify the issue for future judges in future cases.”  Id. at 3.

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