Court Narrows Invalidity Case Through IPR Estoppel, but Federal Circuit’s Shaw Decision Keeps Some Arguments Alive

May 9, 2017

Reading Time : 2 min

Under § 315(e), a final decision in an IPR on the validity of a patent claim, generally precludes a later challenge to the validity of a patent claim on any ground that a petitioner “raised or reasonably could have raised during that inter partes review.” In Shaw, the Patent Trial and Appeal (PTAB) instituted the IPR on most of the grounds in the petition, but declined to institute the IPR based on a prior art reference called “Payne.” The Federal Circuit was faced with deciding whether § 315(e) would prevent the petitioner from making a subsequent invalidity challenge based on Payne. Reading § 315(e) strictly and narrowly, the Federal Circuit determined that estoppel did not attach to Payne, reasoning that the petitioner “did not raise—nor could it have reasonably raised—the Payne-based ground during the IPR” because “[t]he IPR does not begin until it is instituted.”

For patent infringement defendants, the Federal Circuit’s rationale presented a tempting strategic possibility. One reading of Shaw is that estoppel might attach to only those grounds that the PTAB relies on in instituting an IPR, leaving open the possibility of an invalidity challenge on every other ground.  

Judge Peterson in the Western District of Wisconsin, however, recently rejected that possibility in Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 14-cv-886-JDP (W.D. Wis. Apr. 18, 2017). There, the defendant’s invalidity arguments fell into two categories: (1) prior art that was raised in an IPR petition, but that was not used by the PTAB to institute the IPR, and (2) previously unasserted prior art. The first category was easy—this was plainly the fact pattern of Shaw, and the court allowed those invalidity arguments to go forward. The court, however, tossed the second category of invalidity arguments.

In the court’s view, allowing post-IPR assertion of non-petitioned grounds “undermines the purported efficiency of IPR.” In short, the legislative history suggests that Congress intended for IPRs to be “a complete substitute” for district court litigation over patent validity. If defendants can “hold a second-string invalidity case in reserve in case the IPR does not go the defendant’s way,” then IPR is not a substitute for district court litigation, but rather an additional step in the process. The Court further noted that at least two other courts—the Middle District of North Carolina and the Northern District of Illinois—have held similarly. Based on this ruling, a defendant who wants to preserve as many possible grounds for challenging invalidity will want to put all of its grounds in its IPR petition. Any grounds that are not used as the basis for instituting the IPR could then become the petitioner’s “second-string” arguments to be used in district court.

Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.