Inter Partes Reviews (IPRs) are becoming ever more popular avenues for challenging issued patents. While IPRs have the benefits of being quicker and potentially cheaper than a district court litigation, one potential drawback is the estoppel provision of 35 U.S.C. § 315(e)(1) which limits the petitioner from reasserting invalidity grounds in a district court or International Trade Commission (ITC) proceeding. Thus, if a petitioner’s best argument loses in an IPR, 35 U.S.C. § 315(e)(1) appears to forestall using that argument again.
Whether the estoppel provision of 35 U.S.C. § 315(e)(1) actually prevents such argument reuse has been hotly contested, but the Federal Circuit has so far refused to weigh in on the issue. In its recent opinion in AVX Corporation v. Presidio Components, Inc., the Federal Circuit again put off the question for another day. The Federal Circuit did give a hint that a judgment against a party that lacks a right to appeal may not have preclusive effect, but found AVX lacked standing so did not reach the actual question. As such, it remains to be seen whether the provisions of 35 U.S.C. § 315(e)(1) will have any actual teeth against petitioners.
Read the AVX opinion here.