IPR Estoppel Issues

• Jurisdiction: United States,Federal
• Law Firm: Baker Botts
• Subject Matter: Intellectual Property, Patent
• Author: Mr Nick Baniel
• Published date: 22 May 2023

The scope and applicability of inter partes review ("IPR") estoppel continues to develop and reshape patent litigation across the country. After a ruling from the Federal Circuit in Apple Inc. v. California Institute of Technology (Caltech) in early 2022, the Supreme Court is now considering whether to take another look at pivotal IPR estoppel provisions in the America Invents Act (AIA).¹ In the current landscape, many uncertainties remain regarding exactly when, how, and to what extent IPR estoppel applies after a successful (or partially successful) IPR. These implications are significant and go far beyond the named parties in Caltech, as the potential benefits and risks of estoppel must be understood by litigants before filing an IPR petition.

The Evolution of IPR Estoppel

Under 35 U.S.C. ' 315(e), IPR estoppel applies to "any ground that the petitioner raised or reasonably could have raised during that inter partes review."² In practice, this typically prevents the petitioner from presenting certain paper art (e.g., patents and publications) in a parallel district court proceeding. However, the exact scope of this provision has been disputed ever since the IPR proceedings were codified in the AIA. Initially, courts largely dwelled on the "raised during" language in ' 315(e) and the Patent Trial & Appeal Board's (PTAB) a la carte approach of selecting only certain grounds presented in an IPR petition for institution. Following that theory, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. found that because an IPR "does not begin until it is instituted," it necessarily follows that IPR estoppel applies only to those actually at issue (e.g., those instituted by the PTAB).³ Accordingly, under Shaw prior art in non-instituted grounds could be asserted in a parallel district court proceeding.

This theory was dealt a blow by the Supreme Court's holding in SAS Institute Inc. v. Iancu, which requires the PTAB to completely institute or deny review on all grounds presented in an IPR petition.⁴ District courts subsequently grappled to reconcile the Federal Circuit's holding in Shaw with SAS and ' 315(e). Because, post-SAS, the PTAB can now only consider the petition as a whole, the reasoning relied upon in Shaw seemed largely obsolete. Faced with conflict between SAS and Shaw, district courts subsequently applied divergent interpretations of ' 315(e): a narrow view which applies IPR estoppel only for grounds which the PTAB...