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

PTAB Left to Mitigate the Damage from Collateral Estoppel

Posted by Nathan Speed on Jan 30, 2018

Nathan Speed

Collateral estoppel, or issue preclusion, is the legal doctrine that bars a litigant from re-litigating in subsequent litigations an issue that it lost in an earlier litigation. The doctrine had been applied in the administrative context previously, and in Maxlinear, Inc. v. CF Crespe, the Federal Circuit confirmed that it applies in IPR proceedings. In doing so, however, the court left the Board to resolve an interesting practical question as to how exactly collateral estoppel should apply on remand. Depending on how the Board resolves this practical issue, Maxlinear may provide petitioners a significant windfall as they will be able to challenge claims on the basis of prior art that they never cited to the Board. 

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Topics: IPR Estoppel

Estop Confusing Us: District Courts Take Wildly Different Views on IPR Estoppel

Posted by Post-Grant Group on Jun 20, 2017

What is the scope of IPR estoppel? It depends. Not necessarily on the facts, but sometimes on the court: district courts continue to have divergent views of IPR estoppel. 

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Topics: IPR Estoppel

Estop or Go at the PTAB

Posted by Ed Walsh on Oct 7, 2015

Ed Walsh

The price of challenging a patent in an IPR or post-grant review is often said to include estoppel that would block, at a minimum, other challenges at the Patent Office to any claims for which a final written decision is issued by the Board. We recently commented on a potential exception to this rule. A further exception is being debated in International Business Machines Corporation v. Intellectual Ventures II LLC, IPR2014-01465 (Paper 29).

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Topics: Petitioners, Patent Owners, IPR Estoppel

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