RESOLVED, that IPO favors revising the current estoppel standard for post-grant review proceedings so that estoppel applies only to the grounds actually raised in civil actions or other proceedings; thus, 35 U.S.C. § 325(e)(2) should be revised as shown below:
“CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”
