United States: PTAB Muddies The Murky Water Of IPR Estoppel After Shaw

The Federal Circuit's decision in Shaw1 affirmed the PTAB's policy that a Petitioner was not estopped from requesting inter partes review ("IPR") based on prior art previously included in a petition for IPR, but for which institution was denied, because grounds petitioned for, but not instituted on, are not grounds "that [a] petitioner raise or reasonably could have raised during that inter partes review" under 35 U.S.C. § 315(e)(1). Subsequent district court decisions have held that the holding in Shaw applied equally "to prior art references that were never presented to the PTAB at all."2 On February 15, 2017, the PTAB's decision denying institution in Great West Casualty Co. v. Intellectual Ventures, IPR2016-01534 (PTAB Feb. 15, 2017) disagreed with the extent to which the courts have extended Shaw, stating "we discern that [Shaw] held that estoppel does not apply to any ground of unpatentability that was presented in a petition, but denied institution." IPR2016-01534 at 12 (emphasis added).

On August 12, 2016, Great West Casualty Company, BITCO General Insurance Corporation, and BITCO National Insurance Company (collectively "Petitioner") filed a Petition requesting inter partes review of claims 11-20 of U.S. Patent No. 7,516,177 (the "'177 patent"), and concurrently Petitioner filed a Motion for Joinder requesting to join IPR2016-01434, previously filed on July 14, 2016 by Oracle America Inc., Oracle Corporation, and HCC Insurance Holdings, Inc. (the "Oracle IPR"). Petitioner previously filed four petitions for IPR of the '177 patent, two of which were instituted on grounds challenging claims 11-13 and 15-20, and resulting in a final written finding those claims unpatentable on January 17, 2017.

The August 12, 2016 Petition sought institution on precisely the same grounds as those instituted in the Oracle IPR—three separate § 103 grounds in view of three combinations of Robinson and Bezos; Robinson, Bezos and Coates; and Robinson, Bezos, and Excite. The Robinson reference had never been raised before by Petitioner in the previously filed IPR petitions, and the Board's decision focused on whether Petitioner "reasonably could have raised" a ground of unpatentability based on the Robinson reference in the previous IPR petitions.

Relying on Shaw, and the reasoning supplied by certain district courts that have addressed IPR estoppel, Petitioner's position was that, because IPR had not been instituted on the Robinson reference, it could not be a reference that "reasonably could have been raised during that inter partes review" under § 315(e)(1). As in Shaw and in subsequent district court opinions, the Petition focused on the words "during that inter partes review," because an IPR does not begin until a trial has been instituted, and that trial is limited to the instituted grounds. But, the Board disagreed, stating that Congress would not have included the words "or reasonably could have raised" if Congress had desired that the estoppel effect of IPR be limited to those grounds actually instituted. Thus, the Board rejected Petitioner's argument that estoppel did not apply to grounds never raised before, because Shaw, according to the Board, is limited to only those grounds of unpatentability that were previously presented in a petition, but denied institution.

The Board found a substantive distinction between a ground that Petitioner affirmatively attempted to raise, but was denied a trial, and a ground that Petitioner could have raised, but elected not to. While the principles of fairness and due process dictate that the former should not be estopped, in the latter, the Board reasoned that Petitioner previously made an affirmative choice to avail itself of IPR only on certain grounds (excluding Robinson), and "that choice ... comes with consequences." The Board was not persuaded by the reasoning employed by the district courts, and quotes Intellectual Ventures for pointing out that "extending [the logic of Shaw] to prior art references that were never presented to the PTAB at all ... confounds the very purpose of this parallel administrative proceeding."3 But, where the Intellectual Ventures court explained that it "cannot divine a reasoned way around Shaw," the Board found the way by asserting that Shaw did not address the situation where a petitioner raises grounds never raised before.

As to the question of whether the Robinson reference "reasonably could have been raised" during Petitioner's previous IPRs, Petitioner asserted that (1) Petitioner was unaware of Robinson prior to the filing of the petition in IPR2016-01434 "despite an exhaustive, litigation motivated prior art search" and (2) there was no evidence Robinson could be found in the types of places a prior art searcher would look. The Board again disagreed, relying on Patent Owner's assertion that Robinson was readily identifiable, as supported by the petition in the Oracle IPR—by unrelated petitioners—which explained where the Robinson reference would have been found. The Board concluded that, though it accepted the Petitioner's assertion that an extensive search did not locate the Robinson reference, the assertion that there was no evidence Robinson could have been found was persuasively refuted by the Patent Owner. Thus, the Board determined that Robinson "was readily identifiable in a diligent search" and "reasonably could have been raised" in Petitioner's prior completed IPRs. For these reasons, Petitioner was estopped from challenging claims 11-13 and 15-20 of the '177 patents based on the Robinson combinations.

Insofar as the PTAB's decision in the Great West Casualty Co. results in differing estoppel effects in later filed IPRs than in certain district court cases, practitioners are counseled to exhaust their ability to search for references and may consider comprehensive petitions including all potential grounds for IPR up front to avoid the estoppel effect if they anticipate the potential for subsequent petitions. Whether the estoppel effect will be harmonized between the Board and the courts remains to be seen, pending clarification by the Federal Circuit.


[1] Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016) ("The IPR does not begin until it is instituted. . . . Thus, Shaw did not raise—nor could it have reasonably raised—the Payne-based ground during the IPR.").

[2] Intellectual Ventures I LLC v. Toshiba Corp., 2016 WL 7341713, * 13 (D. Del. Dec. 19, 2016); see also, Verinata Health, Inc. v. Ariosa Diagnosis, Inc., 2017 WL 235048, * 3 (N.D. Cal. Jan. 19, 2017).

[3] Intellectual Ventures I LLC v. Toshiba Corp., 2016 WL 7341713 at * 13.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Oblon, McClelland, Maier & Neustadt, L.L.P
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Oblon, McClelland, Maier & Neustadt, L.L.P
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions