Savvy Shaw-Ping: A Strategic Approach to AIA Estoppel

The America Invents Act (AIA) was signed into law in 2011 and made sweeping changes to the U.S. patent laws, including the introduction of two new permanent proceedings to determine patentability of claims in granted patents: Inter Partes Review (IPR) and Post Grant Review (PGR). IPR and PGR, referred to collectively herein as “AIA Trials,” were created “to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs” and “to create a timely, cost-effective alternative to litigation.” These proceedings occur before the Patent Trial and Appeal Board (PTAB) and are adversarial in nature between the patent owner and a party petitioning for review of the patent claims. But AIA Trials are not without potential trade-offs for petitioners: they risk estoppel of certain invalidity grounds in subsequent proceedings.