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29 June 2017PatentsJohn Isacson

Estoppel: putting a stop to repeat offenders

The 2011 America Invents Act (AIA) brought post-grant oppositions to the US patent system. These proceedings are referred to as inter partes review (IPR), post-grant review (PGR) and covered business method review (CBM). The desire was to create faster and less expensive alternative pathways for challenging patents using the US Patent and Trademark Office (USPTO) as the forum. The predecessor pathways of ex parte and inter partes reexamination were considered insufficient because these proceedings proved to be time-consuming and did not offer discovery.

There have been concerns that IPRs and PGRs can invite harassment of patent owners by third party petitioners through the submission of serial petitions for review. In order to prevent serial filings by petitioners, both IPRs and PGRs have estoppel provisions that pertain to subsequent actions in the USPTO, the courts and the US International Trade Commission (ITC). As a balance to the estoppel, dissatisfied IPR and PGR petitioners have a statutory right to appeal to the US Court of Appeals for the Federal Circuit under 35 USC §141(c).

Current status of the estoppels

The estoppels in IPRs are governed by 35 USC §315(e)(1) and (2). These estoppels provide that following a final written decision, a petitioner in the IPR may not assert in subsequent USPTO, court and ITC actions “any ground that petitioner raised or reasonably could have raised during that inter partes review.”

PGR estoppels are governed by 35 USC §325(e) and contain the same aforementioned rule as IPRs.

The “reasonably could have raised” statutory language can lend itself to a broad scope afforded to the estoppel. Indeed, former USPTO Director David Kappos testified on the apparent breadth of the estoppel during the AIA hearings:

“If I can say that in my own words also, that I believe there are significant advantages for patentees who successfully go through the post-grant system—in this case inter partes review—because of those estoppel provisions. Those estoppel provisions mean that your patent is largely unchallengeable by the same party.”

The precise contours of the statutory estoppels are still subject to judicial interpretation, particularly the “reasonably could have raised” provisions in view of the Federal Circuit decision in Shaw Industries Group v Automated Creel Systems, 817 F.3d 1293 (Fed. Cir. 2016).

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