Failure to Appeal After SAS Results in Estoppel as to Non-Instituted Grounds, PTAB Litigation Blog

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As the boundaries of estoppel post-SAS continue to unfold, one court has found that if a petitioner’s time for appealing a PTAB partial-institution decision had not yet run out at the time that SAS was handed down, then the failure to appeal after SAS results in estoppel as to the non-instituted grounds. In SiOnyx, LLC v. Hamamatsu Photonics K.K., 1-15-cv-13488 (D. Mass. Aug. 30, 2018) (Order), one of the defendants ("HC") petitioned for IPR of all claims of one of the asserted patents, on one or more of five different grounds. On March 30, 2017, the PTAB instituted review as to some, but not all, of the challenged claims. The PTAB issued its final written decision on March 28, 2018. While SiOnyx (the patentee) filed a notice of appeal, HC did not file a cross-appeal.

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