Recent PTAB Decision Informs Applicants and Petitioners about How Estoppel Issues Will Be Addressed

Recently, the Patent Trial and Appeal Board ("the Board"), issued an informative decision in Apotex Inc., v. Wyeth, LLC, IPR2015-00873 ("the '873 IPR"), providing insight into how the Board will apply estoppel under 35 U.S.C. §315(e)(1) and exercise its discretion under 35 U.S.C. §325(d). Previously, Apotex filed an IPR petition, IPR2014-00115 ("the '115 IPR"), against the same patent at issue in the '873 IPR, which resulted in the issuance of a Final Written Decision. In view of the Final Written Decision in the '115 IPR, the patent owner asserted that Apotex was estopped from "requesting inter partes review because the asserted grounds are based on prior art that the petitioner 'was aware of, cited and relied upon [in the previous] '115 IPR.'" Finding that the preconditions for §315(e)(1) estoppel applied, the Board found that the petitioner was estopped from raising one of the two asserted grounds. No estoppel applied to the other ground, however, because the ground