Estoppel from inter partes review (IPR) or post-grant review (PGR) prevents the petitioner from raising or maintaining a ground of challenge at the Patent Office, the district courts, or before the International Trade Commission (ITC) on any ground that the petitioner raised or reasonably could have raised during an IPR or PGR.  The estoppel provisions of the America Invents Act, however, do not contain a definition of what “reasonably could have raised” means. 

The Patent Trial and Appeal Board (PTAB) and the district courts have reached different conclusions on what “reasonably could have raised” means.  Ironically, the divergence between the PTAB and the district courts’ interpretation of the scope of estoppel has become more pronounced after the Federal Circuit’s decision in Shaw Industries, in which the court addressed the scope of estoppel for grounds of challenge that were denied institution by the PTAB.

Jonathan Bowser’s article Under the Same Precedent, Different Estoppel Standards Have Developed in the PTAB and the District Courts surveys PTAB and district court cases that illustrate the different estoppel standards evolving from the PTAB and the district courts despite the same Federal Circuit precedent and statutory provisions, and discusses the practical implications of this divergence. 

Read the full article by clicking on the link to the right.