Federal Circuit Resolves Circuit Split On Scope Of IPR Estoppel

What You Need to Know

Key takeaway #1

Following the Federal Circuit's recent decision, patent challengers are likely to seek out and rely more on commercial product prior art to support new invalidity theories post-IPR.

Key takeaway #2

This decision may also influence the Patent Trial and Appeal Board's approach to discretionary denial.

As part of the 2012 America Invents Act, statutory estoppel was included to balance the interests of patent owners and patent challengers following an inter partes review ("IPR"). Estoppel prevents an IPR petitioner from later asserting in court that a claim "is invalid on any ground that the petitioner raised or reasonably could have raised" during the IPR. 35 U.S.C. § 315(e)(2). As applied, estoppel prevents petitioners from later relying in district court or in ITC proceedings on most patents or printed publications – the limited bases upon which petitioner can rely in an IPR. But a question remained, and contradictory