Anant Saraswat

Recent Posts

Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully

Posted by Anant Saraswat on Nov 19, 2019

Anant Saraswat

Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that whether a particular invalidity argument “reasonably could have [been] raised” is a fact-intensive question that the parties must be prepared to address. These cases also show that both patent owners and challengers should develop a factual record relating to whether estoppel applies to a given invalidity theory.

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Topics: Patent Owners, IPR, PTAB

IPR Estoppel May Apply to Product-Based Defenses

Posted by Anant Saraswat on Sep 4, 2019

Anant Saraswat

Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds the petitioner “raised or reasonably could have raised” in the IPR, which may in practice mean any grounds based on patents or printed publications. Thus, petitioners involved in parallel litigation sometimes assert backup invalidity defenses based on prior art products. Two recent cases demonstrate that while such defenses can avoid estoppel, courts may reject perceived attempts to dodge estoppel by simply repackaging a publication-based ground as a product-based ground.

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Topics: IPR Estoppel, ITC, IPR

Be Careful What You Wish For Post-SAS

Posted by Anant Saraswat on Feb 12, 2019

Anant Saraswat

In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recent decision says yes, in at least some circumstances. And while the facts of this case are unusual, it nevertheless demonstrates that petitioners should be cautious when relying on SAS to try to induce the PTAB to reconsider grounds that it didn’t originally find persuasive.

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Topics: PTAB, Post-Sas

Don’t Forget the Specification When Applying BRI

Posted by Anant Saraswat on Jul 20, 2018

Anant Saraswat

A recent Federal Circuit decision illustrates the dangers of construing claims too broadly when applying the “broadest reasonable interpretation” (BRI) standard. Petitioners especially must remember that the BRI of a term must be “reasonable” in light of the specification. Relying on broad constructions that fail to account for narrowing language in the specification can lead to defeat.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.