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ARTICLE · 25 AUGUST 2020

How SAS Has Focused Courts' Approaches To IPR Estoppel

Oblon
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US courts have struggled with applying the IPR estoppel provisions since the America Invents Act (AIA) was enacted.

United StatesIntellectual Property
Oblon, McClelland, Maier & Neustadt, L.L.P
Oblon, McClelland, Maier & Neustadt, L.L.P
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The US Supreme Court's 2018 decision in SAS Institute v Iancu changed PTAB strategy for petitioners and patent owners, says Oblon's Stephen McBride, and this has led to a more consistent approach in how lower courts handle estoppel.

US courts have struggled with applying the IPR estoppel provisions since the America Invents Act (AIA) was enacted. After receiving a final written decision, the petitioner may not later assert that the claims are invalid "on any ground that the petitioner raised or reasonably could have raised" during the IPR (35 USC § 315(e)(2)).  This leaves the open question of what prior art "reasonably could have [been] raised" in the petition such that estoppel should apply. 

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