As more patents survive AIA inter partes reviews, the application of estoppel for invalidity arguments in district court and the PTAB is becoming increasingly important. A year ago, in Shaw Industries v. Automated Creel Systems, the Federal Circuit held that estoppel does not apply to grounds denied by the PTAB in an IPR because the “IPR does not begin until it is instituted.”
But in Intellectual Ventures v. Toshiba late last year, a district court also refused to apply estoppel to “references that were never presented at all.” It is not clear at present whether the Federal Circuit will confirm that view, or if it will feel obliged to define the boundaries of prior art that “reasonably could have been raised” as in Section 315. Today, an uncomfortable stasis holds: District courts are interpreting Shaw to apply Section 315(e)(2) one way, while the PTAB interprets nearly identical language in Section 315(e)(1) in a different way that broadens IPR estoppel. Our panel will analyze the situation for both patent owners and petitioners, and offer tactics on how both can best navigate the legal uncertainties.
Speakers:
- Jon Gurka, Knobbe, Martens, Olson & Bear LLP
- Hon. Faith Hochberg, Hochberg ADR
- Thad Kodish, Fish & Richardson PC
