Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denial based on parallel infringement litigation in district court or the ITC.
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.
Parties accused of patent infringement often turn to IPRs to invalidate the asserted patents, and winning in an IPR can mean relief from whatever remedy would be imposed as a consequence of a finding of infringement. That strategy came under examination in a recent decision from the International Trade Commission (ITC), which declined to get rid of an exclusion order (i.e., an injunction) even after the PTAB found the infringed claims unpatentable. That does not mean, however, that the party found to infringe is without options.