PGR Estoppel Continues to be Broad and Onerous

PGR Estoppel Continues to be Broad and Onerous, PTAB Litigation Blog

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An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC.  Under Section 325(e)(2) of the AIA “[t]he petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision… may not assert either in a civil action … or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” 35 U.S.C. § 325(e)(2).  In cases that interpret similar language under the AIA regarding inter partes review, courts have held that the phrase “reasonably could have raised” refers to prior art that the petitioner actually knew about or that a skilled searcher conducting a diligent search would have been reasonably expected to discover.

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