PTAB Muddies the Murky Water of IPR Estoppel after Shaw, PTAB Litigation Blog
The Federal Circuit’s decision in Shaw affirmed the PTAB’s policy that a Petitioner was not estopped from requesting inter partes review (“IPR”) based on prior art previously included in a petition for IPR, but for which institution was denied, because grounds petitioned for, but not instituted on, are not grounds “that [a] petitioner raise or reasonably could have raised during that inter partes review” under 35 U.S.C. § 315(e)(1). Subsequent district court decisions have held that the holding in Shaw applied equally “to prior art references that were never presented to the PTAB at all.” On February 15, 2017, the PTAB’s decision denying institution in Great West Casualty Co. v. Intellectual Ventures, IPR2016-01534 (PTAB Feb. 15, 2017) disagreed with the extent to which the courts have extended Shaw, stating “we discern that [Shaw] held that estoppel does not apply to any ground of unpatentability that was presented in a petition, but denied institution.” IPR2016-01534 at 12 (emphasis added).
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