In Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., Appeal Nos. 2015-1116, -1119, the Federal Circuit denied Shaw’s petition for a writ of mandamus to require the PTO to institute another IPR based on grounds that the PTAB had previously refused to institute as redundant.
ACS sued Shaw for patent infringement and Shaw petitioned for IPR of all of the patent’s claims, citing fifteen different invalidity grounds. The PTAB instituted the IPR on most of the claims, but decided not to institute on the grounds based on the Payne reference due to redundancy. The PTAB upheld the patentability of some of the claims. Shaw appealed.
On appeal, Shaw petitioned for a writ of mandamus to require the PTO to institute an IPR based on the Payne reference. Shaw’s arguments were predicated on its concern that the estoppel provision in 35 U.S.C. § 315(e) prevented Shaw from raising an invalidity defense in the district court action, or in a future IPR, using the Payne reference. The Federal Circuit, however, explained that § 315 would not estop Shaw from later raising its arguments because estoppel only applies to arguments on grounds the petitioner raised or reasonably could have raised during the IPR. Since no IPR was instituted on that ground, the Federal Circuit held that Shaw did not raise the ground during the IPR.