IPR Estoppel Might Not Be So Scary

The rules for post-grant proceedings established by the America Invents Act (AIA) provide that once the Patent Trial & Appeal Board (Board) renders a final written decision, a petitioner in an inter partes review (IPR) is prohibited from raising before the patent office, a district court, or the International Trade Commission "any ground that the petitioner raised or reasonably could have raised during that inter partes review."¹ Initially, many believed that such broad estoppel provisions would deter parties from considering such post-grant proceedings.

In this regard, there has been much uncertainty about how courts will apply the IPR estoppel provisions of 35 U.S.C. § 315(e)(1) and whether a petitioner will be estopped in a subsequent IPR from raising grounds deemed "redundant" (i.e., multiple, similar arguments challenging the patentability of the same claims within an IPR) in a previous IPR.²