Although we typically focus our posts on biosimilar-specific issues, we wanted to highlight a recent IPR-related filing that is likely of interest to many of our readers.

The scope of estoppel that attaches to a petitioner (and petitioner’s privies and all real parties in interest) in a later district court litigation under 35 U.S.C. § 315(e)(2) is a quickly evolving issue in the district courts.  The Federal Circuit addressed, in dictum, the scope of the estoppel in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), and some district courts have cited this decision in narrowly construing the scope of estoppel.

On January 27, Patent Owners disappointed with a district court’s decision regarding the scope of estoppel, filed a petition for a writ of mandamus with the Federal Circuit.  The issues presented in the petition are as follows:

1. Do prior art grounds that the petitioner reasonably could have submitted in an IPR petition, but never did, qualify for § 315(e)(2) estoppel?
2. Do prior art grounds that the PTAB rejected as part of its IPR institution decision qualify for a § 315(e)(2) estoppel, if the petitioner could have properly raised those grounds during institution had it met the legal standards for doing so?
3. For purposes of § 315(e)(2) estoppel, are prior art “grounds” limited to the specific prior art publication that is the basis for the instituted IPR proceeding or are such grounds defined by the substance of the disclosure such that an argument based on alternative publication or combination might in fact be understood to be the same as an instituted ground and thus estopped?