Developments in IPR Estoppel

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo presented the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023.

The possibility of being estopped from asserting prior art in district court is a significant risk that must be considered when filing an IPR. Estoppel can have serious consequences both in the PTAB and in district court.

It is important for practitioners to understand the ever-evolving nature of IPR estoppel. During this webinar, our speakers explored current developments in the law, including:

• The Federal Circuit’s Ironburg decision and the “skilled searcher” standard for assessing estoppel of invalidity grounds involving newly discovered art;
• Estoppel as applied to product art, and the district courts’ various approaches to addressing that issue; and
• The extent to which common law estoppel (i.e., issue preclusion and claim preclusion) can fill in gaps left by statutory estoppel.

Key takeaways included:

• What evidence parties should adduce in district court to establish that an IPR petitioner should (or should not) be estopped based on newly discovered art;
• How to navigate diverging case law addressing whether and to what extent estoppel applies to product art described by printed publications asserted during IPR; and
• What role common law estoppel has to play in IPRs.

CLE is not available for On Demand viewing.