The Interface Between District Court Litigation and Contested Office Proceedings under the AIA: Petitioner Estoppels

An adverse decision in an IPR estops a Petitioner/accused infringer from raising certain invalidity defenses. What defenses are potentially affected?

The petitioner who loses an IPR will be estopped from raising any issues in district court (and the ITC) that it raised or reasonably could have raised in the IPR.

IPR is limited to patentability attacks under §§ 102/103 using patents and printed publications. Therefore, the estoppels are likewise limited to §§ 102/103 invalidity defenses based on patents and printed publications. By statute a petitioner cannot use evidence of a § 102(b) prior sale or public use in an IPR, and thus the petitioner will not be estopped from using that prior sale or public use in court.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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