While district courts haven’t applied the inter partes review estoppel provision with as much rigor as some expected, the Patent Trial and Appeal Board continues to press forward with its more broad interpretation, leaving some confused and clamoring for guidance from the Federal Circuit.
The scope of the estoppel provision, which limits the arguments those seeking to invalidate patent claims can raise following PTAB review, has been a closely watched issue since the America Invents Act was enacted more than five years ago.
Based on how the PTAB is treating the estoppel provision, Kia Freeman of McCarter & English LLP said petitioners will want to make sure they put their best case together the first time around, careful not leave out important arguments or references.
“You can’t skimp on searching and you can’t skimp on your petition,” she said. “Once you file your petition, that might be the only opportunity the board is going to give you to review the patent that you’re challenging.”