An Invalidity Argument Without A Home? The PTAB's Discretion To Ignore Grounds For Invalidity

By Shaun R. Snader¹ & George C. Beck

The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster, less expensive results as compared to district court litigation, and an adjudicative body with expertise in patent law. A significant tradeoff to these new post-grant proceedings is the risk of estoppel.

The estoppel provisions provide that a petitioner in a post-grant proceeding that results in a final written decision as to any claim of a patent cannot assert in district court or International Trade Commission Section 337 litigation an invalidity argument as to the claim "that the petitioner raised or reasonably could have raised during that post-grant review." 35 U.S.C. §§ 315(e)(2)² and 325(e)(2). Thus, an accused infringer may choose to raise invalidity defenses at the USPTO, but risks being precluded from raising the same defenses in district