Prepare for More Estoppel if the Supreme Court Reverses Federal Circuit on Partial IPR Institutions

27
Jun

Prepare for More Estoppel if the Supreme Court Reverses Federal Circuit on Partial IPR Institutions*

On May 22, 2017, the Supreme Court granted certiorari in SAS Institute v. Lee to determine whether the Patent Trial and Appeals Board (“Board”) is required by statute to institute every claim challenged in a petition for inter partes review (“IPR”) if any claim in the petition is instituted. Based on the Federal Circuit’s recent track record at the Supreme Court, the Supreme Court will likely reverse the Federal Circuit and, this time, require that institution become an all-or-nothing decision. If this reversal happens, then estoppel due to IPR proceedings will become more extensive, and defendants will need to consider strategies for minimizing unwanted estoppel.

To read the full article, click here.

 

*This article first appeared in IPWatchdog, June 25, 2017.

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