PTAB Confirms It Will Apply Broad Petitioner Estoppel Post-SAS

Introduction

The IPR estoppel provision was originally intended as a check against patent challengers attacking patents serially in the USPTO or other forums based on grounds that were raised or "reasonably could have been raised" in the original IPR. Although the Federal Circuit has interpreted estoppel narrowly, district courts were split, and estoppel's impact has remained in flux for several years.

The Federal Circuit decisions led some petitioners to present multiple unpatentability grounds in their IPR petitions with the expectancy that some grounds would be denied institution and therefore preserved against estoppel. But, the U.S. Supreme Court's recent SAS Institute Inc. v. Iancu decision—leading to "all or none" institution decisions—has eliminated this approach as a viable strategy. Narrow interpretation is no longer supportable, as it would only estop the exact same grounds raised and instituted upon in an earlier petition, rendering the words "reasonably could have raised" meaningless. And this week, the PTAB confirmed that it will apply estoppel broadly post-SAS. Accordingly, once a final written decision issues, estoppel applies to all grounds instituted upon as well as those that reasonably could have been raised.

Scope of Estoppel

35 U.S.C. § 315(e)(1) and (2) are the statutory provisions regarding petitioner estoppel in IPRs. These provisions dictate that, after a final written decision is issued, a petitioner (and its real parties in interest and privies) are estopped from asserting in a subsequent USPTO proceeding, district court case, or ITC investigation "any ground that petitioner raised or reasonably could have raised" during the IPR in other proceedings before the USPTO, in district court, or in the ITC.

Although the language "any ground that petitioner raised or reasonably could have raised" during the IPR appears straightforward, the Federal Circuit indicated that estoppel should be applied narrowly. In Shaw Indus. Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit took a very literal interpretation of the statute, which refers to grounds that the petitioner "raised or reasonably could have raised during" the IPR, as opposed to those which were raised or could have been raised in a petition for IPR.

Although the Federal Circuit narrowly interpreted estoppel, it is unclear how narrow the Federal Circuit intended it to be, leading to a split in the district courts that have grappled with this issue.

A...