PTAB Confirms It Will Apply Broad Petitioner Estoppel Post-SAS

Introduction

The IPR estoppel provision was originally intended as a check against patent challengers attacking patents serially in the USPTO or other forums based on grounds that were raised or "reasonably could have been raised" in the original IPR. Although the Federal Circuit has interpreted estoppel narrowly, district courts were split, and estoppel's impact has remained in flux for several years.

The Federal Circuit decisions led some petitioners to present multiple unpatentability grounds in their IPR petitions with the expectancy that some grounds would be denied institution and therefore preserved against estoppel. But, the U.S. Supreme Court's recent SAS Institute Inc. v. Iancu decision—leading to "all or none" institution decisions—has eliminated this approach as a viable strategy. Narrow interpretation is no longer supportable, as it would only estop the exact same grounds raised and instituted upon in an earlier petition, rendering the words