FWD Statutory Estoppel vs. Collateral Estoppel
In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD). This is despite the fact that further appeals are routine. This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.
Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel. As to claims that may be cancelled in the same FWD, courts are free to await further appeals.
This unbalanced scenario can be exploited by Patent Owners. Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield