PTAB Applies §315(e) Estoppel Based On References That Could Have Reasonably Been Raised In Earlier Petition

In IPR2018-01002, the petitioner had filed an earlier IPR petition challenging the same claims at issue in the pending IPR. In the Final Written Decision in the previous IPR the Board had ruled on the patentability of all claims. The patent owner asserted in the pending IPR that the petitioner should therefore be estopped from raising new references and arguments in the pending IPR, since the petitioner could just have easily have raised them in the previous IPR. The petitioner argued back that under Shaw, estoppel only applies to grounds that could have been raised for the first time after the institution of the first IPR. The Board disagreed, noting that Shaw merely stands for the principle that under pre-SAS procedures a petitioner is not estopped from raising a ground of unpatentability for which the Board never instituted trial. Additionally, the Board noted that according to its rules no new grounds are permitted after the filing of an IPR. Accordingly, petitioner’s reading of Shaw would render the Board’s own rules effectively meaningless. The petitioner further argued that if estoppel applies, then petitioners will now be encouraged to bring challenges based on every piece of known art. The Board was not persuaded by this argument, pointing to the fact that the Congressional intent of the AIA and of grounds that “reasonably could have raised” includes grounds that the petitioner was clearly aware of , or that a skilled searcher could reasonably have been expected to discover. The petitioner in the instant case did not dispute that it was previously aware of the references submitted in the second IPR when it filed the first IPR. Accordingly, the Board dismissed the petition.

A link to the decision is found here.