Standing Dispute Highlights 315(e)(2) Estoppel Concern

Article III standing has been a problem for certain petitioners seeking review of adverse Patent Trial & Appeal Board (PTAB) AIA trial rulings. This is because, while the AIA statutes provide that anyone other than a patent owner may challenge a patent at the PTAB, Article III standing is necessary for petitioners to appeal adverse PTAB decisions to the Federal Circuit. Phigenix, Inc. v. ImmunoGen, Inc.  Since Phigenix, there have been a number of Federal Circuit decisions exploring the degree of harm necessary to convey Article III standing in this context.

Earlier this week, the Federal Circuit analyzed “competitor harm” as a basis for Article III standing along with the potential of adverse estoppel impact of 35 U.S.C. §315(e)(2) on the petitioner.. While the competitor harm analysis may be interesting from an academic standpoint, the more meaningful discussion for practitioners is the Court’s commentary on the 315(e) estoppel impact for such petitioners. 
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The Impact of SAS Institute on Statutory Estoppel

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). Prior to the Supreme Court’s decision in SAS Institute, the courts did not apply statutory estoppel to grounds upon which the Patent Trial & Appeal Board (PTAB) refused to institute trial. The reasoning was that statutory estoppel under 35 U.S.C. § 315(e)(2) only applied to grounds adjudicated in a Final Written Decision (FWD).  As such, grounds shaken out (i.e., partial institutions) prior to trial could not be covered by such estoppel.

Post-SAS, of course, there are no longer partial institutions and this previous distinction simply goes away.  But what happens to those partially instituted cases that remain pending, can a petitioner side-step the revived SAS grounds in the hope of holding onto this estoppel exception? 
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