When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and Trademark Office proceedings and district court disputes, has been uncertain.

The Federal Circuit’s recent opinion in Shaw Industries Group v. Automated Creel Systems provides some guidance on the scope of that estoppel. This opinion may have important implications for the decision to pursue an IPR proceeding and how petitioners can best present their grounds for institution going forward.

Originally published in Bloomberg BNA's Patent, Trademark & Copyright Journal - April 15, 2016.