In Amkor Tech., Inc. v. Tessera, Inc., IPR2013-00242, Paper 37 (Oct. 11, 2013), the Board rejected a patent owner’s argument that the issues decided in arbitration between the parties “are preclusive under the Patent Act,” thus foreclosing the petition in this case. The Board disagreed because (1) “an inter partes review is concerned with unpatentability of claims . . . not with validity of claims”; (2) the statute acknowledges that inter partes review proceedings can occur before, or after, or concurrent with other proceedings or actions, depending on the specific circumstances”; and (3) “the collateral estoppel that may be applied to subsequent suits in federal courts between the parties does not apply necessarily to the U.S. Patent and Trademark Office (‘PTO’).” The Board thus concluded that “the instant inter partes review is not precluded by the Tribunal’s decision in Amkor II, which found the '076 Patent not invalid.” The Board further rejected the notion that 35 U.S.C. 294 precluded the IPR because the arbitration was for breach of contract, and petitioner had argued that the arbitration “did not finally adjudicate issues of infringement and validity. . . . Amkor quotes the Tribunal in Amkor II as providing that the Tribunal’s consideration of infringement ‘does not turn a cause of action for breach of contract into a cause of action for patent infringement.’” The Board concluded that the arbitration was over a breach of contract, and that not “all issues involved would likewise limit [petitioner] from seeking redress.” Notably, the Board concluded that the patent owner had failed to show that the demand for arbitration was served under 35 U.S.C. 315(b), precluding institution of a post-issuance trial.