Solicitor General to Advise Supreme Court on Issues of Estoppel in Inter Partes Review Proceedings
By Anthony Wenn & Daniel Hess
Intellectual Property,
June 2023
Over the past decade since the Leahy-Smith America Invents Act (AIA) went into effect in 2012, the most widely discussed—and often criticized—aspect of the AIA was the creation of modern inter partes review proceedings. Inter partes review (IPR) is an administrative proceeding to challenge the validity of an issued U.S. patent before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office. Any entity may file an IPR petition at the PTAB to challenge the validity of any issued patents.[1] The PTAB, in its discretion, may then grant or deny the petition to institute a trial to reassess the validity of the issued patent. Statistically, petitioners have a high likelihood of invalidating a patent owner’s patent by instituting an IPR. The current petition to the Supreme Court for certiorari in Apple, Inc. v. California Institute of Technology may affect the scope of the estoppel afforded to patent owners by 35 U.S.C. § 315(e)(2).
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