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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigationPatent Litigation

IPR Estoppel: The Present and the Future

By John P. Isacson

The America Invents Act (AIA) created inter partes review (IPR) to allow the public to challenge issued patents based upon published prior art. IPRs allowed for greater participation for challengers, and replaced the previous inter partes reexamination procedure. IPRs are conducted before a panel of Administrative Patent Judges of the Patent Trial and Appeal Board (PTAB). In contrast, inter partes reexamination was conducted before a patent examiner, and permitted appeal to the PTAB.

The AIA contains estoppel provisions for IPR judgments. Congress included these provisions to address concerns that challengers could harass patent owners through serial filing of IPR petitions. See, 157 Cong. Rec. S1374 (March 8, 2011). The estoppel provisions provide that an IPR petitioner who has received a final decision on a claim may not request or maintain another proceeding against that claim on a ground that the petitioner “raised or reasonably could have raised.” 35 USC §315(e). The estoppel applies in patent office proceedings, district court actions and Section 337 actions by the International Trade Commission.

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