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Stays of Litigation Pending Third-Party IPR and CBM Review

By Gregory Lantier and Robert Arcamona1

One of Congress’s goals in enacting the America Invents Act (“AIA”) was to reduce the high cost of litigation involving patents that are invalid. In furtherance of this goal, Congress established inter partes review (“IPR”) and covered business method patent review (“CBM review”) to provide an alternative to district court litigation. The AIA’s text and legislative history reflects an expectation in Congress that, under appropriate circumstances, concurrently pending district court litigation will be stayed while IPR or CBM review is performed by the Patent Trial and Appeal Board (the “Board”). 2

The AIA also establishes estoppel rules that prevent a petitioner before the Board from litigating certain invalidity arguments in subsequent court proceedings. Following a final written decision in an IPR, the petitioner and any “real party in interest” or “privy of the petitioner” are estopped from asserting “any ground that the petitioner raised or reasonably could have raised” in the IPR. 35 U.S.C. § 315(e)(2). The same estoppel applies in the CBM context, although it is limited to just “any ground that the petitioner raised” in the CBM review. See Leahy-Smith America Invents Act, Pub. L. 112-29, 125 Stat. 284, § 18(a)(1)(D) ...

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