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.

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

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.

© Sterne, Kessler, Goldstein & Fox P.L.L.C. | Attorney Advertising

Written by:


Sterne, Kessler, Goldstein & Fox P.L.L.C. on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.