Estoppel After Final Written Decisions in IPR and PGR Proceedings

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The past few months have shed some light on the Patent Trial and Appeal Board’s approach to estoppel in post-grant proceedings. Estoppel, under 35 U.S.C. §§ 315(e)(1) (for inter partes review) and 325(e)(1) (for post-grant review), applies to final written decisions on a claim by-claim basis. Moreover, estoppel applies not only when a petitioner, or a real party in interest or privy of the petitioner, raised the arguments in a prior IPR or PGR proceeding, but also when he/she “reasonably could have raised” them.

Estoppel applies to final written decisions on a claim-by-claim basis. In Westlake Services, LLC v. Credit Acceptance Corp., the Board rejected the patentee’s motion to terminate the proceeding based on a final written decision in a prior proceeding, which involved the same patent and petitioner, but not the same claims.

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