US: District Court Defines Scope of IPR Estoppel by Specifying When Prior Art “Reasonably Could Have Been Raised” in an IPR

One key trade-off for petitioners challenging the validity of a patent at the U.S. Patent and Trademark Office (PTO) is being estopped from making a parallel challenge in district court. If the PTO issues a final written decision in an inter partes review (IPR), the petitioner is estopped from later urging in court that a reviewed patent “claim is invalid on any ground that the petitioner raised or reasonably could have raised” in its IPR. 35 U.S.C. § 315(e)(2). However, the estoppel statutory provision does not state precisely when prior art that was not used in an IPR will be barred from use in court as part of invalidity grounds that “reasonably could have [been] raised” in the IPR.

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