United States: Part III: Another Update On IPR Estoppel In The Courts And At The PTAB

In March 2017, I reported on the shifting standard for estoppel in inter partes review (IPR) proceedings. See The shifting standard for IPR estoppel: Where are we now? In September 2017, I provided another update. See An update on the shifting standard for IPR estoppel. While those articles go into greater detail, district courts have been split as to the scope of IPR estoppel under 35 U.S.C. § 315(e)(2). Unfortunately, over a year later, not much has changed. Nonetheless, a revisit of the issue may be helpful, along with an analysis of the related IPR estoppel before the Patent Trial and Appeal Board ("PTAB" or "Board"), which was not discussed in the previous articles.


The Federal Circuit strictly interpreted § 315(e) in Shaw Indus. Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293, 1299-1300 (Fed. Cir. 2016), and thus arguably held for very narrow IPR estoppel. In that case, where the PTAB had instituted IPR on some (but not all) grounds raised in the IPR petition, the Federal Circuit indicated that estoppel does not apply to prior art raised in non-instituted grounds. As the Federal Circuit held in a subsequent case, "the non-instituted grounds do not become a part of the IPR. Accordingly, the non-instituted grounds were not raised and, as review was denied, could not be raised in the IPR. Therefore, the estoppel provisions of § 315(e)(1) do not apply." HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347-48 (Fed. Cir. 2016) (citing Shaw, 817 F.3d at 1299-1300). That is, the Federal Circuit took a literal interpretation of the statute, which refers to grounds that the petitioner "raised or reasonably could have raised during that inter partes review" (as opposed to those that were raised or could have been raised in a petition for inter partes review).

In Shaw and HP, the Federal Circuit technically analyzed 35 U.S.C. § 315(e)(1), which relates to IPR estoppel before the PTAB, e.g., estoppel in subsequent IPR proceedings. On the other hand, 35 U.S.C. § 315(e)(2) relates to IPR estoppel before district courts, e.g., in co-pending or subsequent infringement actions. The scope of IPR estoppel between the two, however, should be identical. Both use the same language, applying estoppel with respect to "any ground that the petitioner raised or reasonably could have raised during that inter partes review." 35 U.S.C §§ 315(e)(1) and (e)(2).

Despite the Federal Circuit's decisions that seemingly provide a very narrow scope for IPR estoppel, only some district courts have followed that approach. Other courts have found ways to distinguish these cases to provide for a broader IPR estoppel, which is arguably more in line with the legislative history. Similarly, the PTAB has also provided for broader estoppel.

Narrow estoppel

After my September article, another district-court judge literally interpreted Shaw and HP as providing for a very narrow scope of IPR estoppel. See, e.g., (Koninklijke Philips N.V. v. Wangs Alliance Corp., 2018 WL 283893, at *4 (D. Mass. Jan. 2, 2018). Under this judge's interpretation, IPR estoppel does not apply to prior art not included in an instituted ground, regardless of whether it was actually included in the IPR petition. This follows under Shaw's reasoning because in instituting an IPR, the Board typically limits the proceeding to some or all of the claims and prior art specifically included in the petition. Typically, the petitioner is not able to raise arguments based on different prior art not included in the institution decision. Thus, after the Board enters a final written decision, it logically can be said that the petitioner couldn't have raised any other non-instituted prior art during the IPR, and thus IPR estoppel does not apply to such other art.

Of course, this view does seem to contradict the legislative history discussed in my May article, and makes the estoppel provision of § 315(e) very weak. Indeed, the District of Massachusetts recognized this, stating "[t]here is much appeal in a broader reading of the estoppel provision." Ultimately, however, the court found that this "broader reading of the estoppel provision is foreclosed by Shaw."

Tallying up the cases discussed in this series of IPR estoppel articles, judges in at least the following districts have literally interpreted Shaw and found for a narrow scope of estoppel as of the present time: District of Massachusetts, Northern District of California, and District of Delaware (although there is an intra-district split in Delaware). Despite being based upon the Federal Circuit's Shaw decision, this currently appears to be the minority view.

Broad estoppel

With respect to the broad view for IPR estoppel since September, the Eastern District of Texas continues to take that approach, limiting both Shaw and HP. See Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc., 2017 WL 48556473 (E.D. Tex. Oct. 27, 2017). As in the past, this case found that Shaw provides only a very narrow exception to IPR estoppel. Under its interpretation, prior art that could have been raised in a petition—but was not—is estopped. Shaw's exception, according to this view, is for art that was actually raised but rejected by the PTAB. (As discussed in the September article, one Texas decision limits Shaw even further, holding the exception only applies to art actually raised but rejected on procedural grounds, as opposed to art rejected on the merits. The Network-1 decision did not address that aspect though.)

Adding up the articles discussed in this series of IPR estoppel articles, judges in at least the following districts have narrowly interpreted Shaw and/or found for broader estoppel: Eastern District of Texas, Northern District of Illinois, Eastern District of Wisconsin, Western District of Wisconsin, Middle District of North Carolina, and District of Delaware (although there is an intra-district split in Delaware). As such, this is currently the majority view, even though one could argue the majority view contradicts the Federal Circuit's Shaw decision.

Looking outside of the district courts, the patent office and the PTAB have also limited Shaw and applied a broad standard for IPR estoppel under the closely related 35 U.S.C. § 315(e)(1). See, e.g., Great West Casualty Co. v. Intellectual Ventures II LLC, Case IPR2016-01534, Paper 13 (PTAB Feb. 15, 2017). In this case, the PTAB specifically rejected the argument that Shaw limits § 315(e)(1) to "grounds actually raised during the prior completed proceedings," as that argument would render superfluous the statutory words of "or reasonably could have raised." Thus, the panel in this case limited the Shaw exception to grounds actually "presented in a petition, but denied institution." This case, , is not precedential, so it is possible that a different panel could reach a different outcome. It is also possible that the PTAB could simply use its discretion under 35 U.S.C. § 314(a) and General Plastic Industrial Co. v. Canon Kubshiki Kaisha, Case IPR2016-01357, Paper 19 (PTAB Sept 6, 2017) (precedential as to Section II.B.4.i) to deny such a follow-on petition in order to avoid even needing to decide the estoppel issue.

Also notable is that the Director—via the Office of Patent Legal Administration—reached the same outcome as Great West in an order vacating an order granting ex parte reexamination. See In re Raynaud, Control No. 90/013,824 (Dec. 15, 2016). There, an ex parte reexamination was terminated with respect to claims that had also been part of an IPR based upon IPR estoppel under § 315(e)(1). Unlike the PTAB's decision in Great West, the patent office in this order did not consider the Shaw decision, and so the requester filed an action in the Eastern District of Virginia challenging the order on that basis. That challenge failed, because the district court found judicial review is precluded for a decision not to institute an ex parte reexamination (including where based upon an estoppel determination). See Synopsys, Inc. v. Matal, 280 F. Supp. 3d 823 (E.D. Va. Nov. 15, 2017).


As before, the scope of estoppel under 35 U.S.C. § 315(e)(2) depends upon the district and the particular judge to which the case is assigned. More courts, however, appear to be applying a broader scope for IPR estoppel. Similarly, although there have not been many cases and they are not precedential, the patent office has (so far) also ruled for broad IPR estoppel under 35 U.S.C. § 315(e)(1).

It is only a matter of time, however, before the issue reaches the Federal Circuit and the standard is clarified. Until then, the best practice continues to be for petitioners to err on the side of caution and assume that anything that could have been raised in the petition will be estopped in subsequent district court litigation and PTAB proceedings.

Tony Blum represents clients before the USPTO in post-grant proceedings and litigates patent infringement suits throughout the country.

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
Hunton Andrews Kurth LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Hunton Andrews Kurth 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