District Courts Split On Scope Of IPR Estoppel

While the inter partes review procedure is nearly five years old, in many respects, the law remains unsettled and continues to evolve. This can be seen from recent district court decisions differing in their interpretation of the scope of IPR estoppel.

The Federal Circuit's Shaw Decision Sets the Stage for IPR Estoppel

In March 2016, the Federal Circuit in Shaw¹ considered the scope of IPR estoppel under Section 315(e), holding that it does not extend to grounds rejected by the PTAB in a decision instituting IPR petitions.

Shaw filed an IPR challenging certain patent claims on three grounds—two asserting obviousness and one asserting anticipation by a different prior-art reference. The PTAB instituted IPR based on the two obviousness grounds, but denied institution based on the anticipation ground, which—without further explanation—it deemed "redundant" to the obviousness grounds. After a trial on the merits, the PTAB determined that Shaw had not proven these