How ITC May Handle Inter Partes Review Estoppel

The America Invents Act introduced inter partes review as an expedited proceeding in the U.S. Patent and Trademark Office for challenging the validity of issued patents based on prior art patents and printed publications. If the Patent Trial and Appeal Board institutes an IPR proceeding, then the PTAB will issue a final written decision at the conclusion of the proceeding. Under the AIA, if a patent claim is upheld in the final written decision, the patent challenger in the IPR is estopped from asserting “in a civil action ... or in a proceeding before the International Trade Commission ... that the claim is invalid on any ground that the petition raised or reasonably could have raised during that inter partes review.”