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PGR Estoppel Applies to Unasserted Art, PTAB Litigation Blog

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Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel.  In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge Payne in the Eastern District of Texas held that PGR estoppel under 35 U.S.C. § 325(e)(2) applies to prior art not asserted in the PGR petition, as long as the other requirements of that section are met.  The court rejected defendant Supercell’s argument, based on the Federal Circuit’s Shaw decision, that Section 325(e) estoppel does not apply to non-petitioned grounds.

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