April 2017

Estoppel Limits of Inter Partes Review

Financier Worldwide
R. David Donoghue | Anthony J. Fuga

When the America Invents Act (AIA) was enacted to include the new inter partes review (IPR) proceeding, stakeholders were focused on the estoppel provision and what that meant for future challenges to a patent by the petitioner. The estoppel provision prohibits a petitioner from later raising before the Patent Office, a district court or the US International Trade Commission, any ground of invalidity that the petitioner “raised or reasonably could have raised” during the IPR. IPR estoppel attaches when the Patent Trial and Appeal Board (PTAB) issues a final written decision – i.e., before the Federal Circuit has decided any appeals from the PTAB decision.

READ: Estoppel Limits of Inter Partes Review

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