Estoppel Evolves

Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have … Continue Reading

AIA Estoppel – 7 Things We Know So Far

By Julianne M. Hartzell and Ryan N. Phelan on June 1, 2017 Posted in Estoppel, Inter Partes Review

When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up? The statute provides … Continue Reading

PTAB Applies Interference Estoppel to Deny IPR Grounds

By Sandip H. Patel on June 6, 2016 Posted in Estoppel, Institution / Denial, Inter Partes Review

A judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Patent Office after the judgment that is inconsistent with that … Continue Reading