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