World IP Review interviewed Finnegan partner Amanda Murphy regarding Patent Trial and Appeal Board (PTAB) cases that have “made a splash” over the past year. Murphy cited the Shaw Industries Group v. Automated Creel Systems decision, where the Court of Appeals for the Federal Circuit overruled the 2016 decision and provided clarification on estoppel. She noted that the Federal Circuit’s decision was a gamechanger for the petitioners—and potentially for the PTAB’s workload.
She explained, “Specifically, Shaw said IPR estoppel only applies to arguments raised during an IPR proceeding, and since an IPR does not begin until it is instituted, arguments that were not raised in a petition are not subject to estoppel.
“While acknowledging that [the 2018 SAS Institute v. Iancu decision] did not explicitly overrule Shaw or address the scope of the IPR estoppel, the Federal Circuit noted in the Caltech case that Shaw rested on the assumption that the board need not institute on all grounds, which the Supreme Court rejected in SAS,” she said.
