A petitioner in an inter partes review may request to cancel as unpatentable one or more claims only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. This is expressly set forth in the statute, 35 U.S.C. §
Review of PTAB’s Partial Institution Practice Further Clouds Scope of Estoppel
On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, No. 16-969, 2017 WL 468440 (U.S. May 22, 2017). The issue in this appeal is whether the America Invents Act permits the Patent Trial and Appeal Board (“the Board”) to partially institute IPR proceedings (as it has been doing).
Uncertainty Regarding the Scope of IPR Estoppel – Part II
As discussed in Part I of this article, the scope of IPR estoppel under 35 U.S.C. § 315(e) remains unclear. In Part II, we explore several approaches that courts may apply.
Specifically, the approaches considered herein contemplate the meaning of the phrase “reasonably could have raised” in the IPR estoppel statute. Clearly, Congress did not
Uncertainty Regarding the Scope of IPR Estoppel – Part I
When the America Invents Act (“AIA”) first went into effect, it was widely believed by practitioners that the scope of the estoppel provisions under 35 U.S.C. § 315(e) was very broad. Essentially, an IPR petitioner whose petition resulted in a final written determination would be estopped from arguing in district court any §§ 102 and/or