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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for September 29th, 2011

New Inter Partes Review Grounds to Stay Most Patent Litigation?

Posted On: Sep. 29, 2011   By: Scott A. McKeown
IPR-estoppelEstoppel Provisions Disfavor Parallel Proceedings

During yesterday’s webinar on post grant USPTO proceedings, I compared the current estoppel provisions of inter partes patent reexamination to that of Inter Partes Review. The Inter Partes Review (IPR) estoppel provisions are similar in some respects to the current inter partes patent reexamination (IPX) provisions, but differ in significant respects.

In some ways, the new estoppel provisions are designed to address shortcomings of the existing IPX estoppel provisions. For example, while IPX estoppel does not apply to ITC proceedings, the IPR provisions extend estoppel to ITC proceedings. Additionally, while the IPX provisions use the terminology “raised or could have raised,” the new IPR provisions recite “raised or reasonably could have raised during Inter Partes Review.” Ostensibly, this language softening is designed to provide some slight wiggle room to account for the late found reference in a far away library of Siberia.

Of perhaps much greater interest however is the aspect of IPR estoppel that may compel judges to stay a parallel litigation pending IPR. Read the rest of this entry »