In its recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., the Federal Circuit held that estoppel does not apply to grounds denied institution on the basis of redundancy. No. 2015-1116 (Fed. Cir. Mar. 23, 2016).

In its institution decision in an IPR, the Board instituted two obviousness grounds against a set of claims, but denied an anticipation ground against the same claims solely on the basis that the ground was redundant. The Board did not address the substance of the anticipation ground, nor did it explain how the ground was redundant. In the final written decision, the Board held that the claims were not obvious over the instituted grounds.

Before the Federal Circuit, the Petitioner sought a writ of mandamus requiring the Board to reevaluate the redundancy decision and institute IPR based on the anticipation ground.

The court noted that mandamus is an extraordinary remedy and that it requires that the “petitioner have no other adequate means to attain the desired relief.” To establish this element, the Petitioner argued that because the Board denied institution on the anticipation ground, the Petitioner may be estopped from pursuing that ground in any future proceedings in either the PTO or district courts.

The court denied the mandamus petition because it disagreed that estoppel would apply to the denied anticipation ground. The court based this holding on its interpretation of the IPR estoppel statute, 35 U.S.C. § 315(e), which states that after a final written decision on a challenged claim, a petitioner cannot assert that the claim is invalid “on any ground that the petitioner raised or reasonably could have raised during that inter partes review” (emphasis added). The court explained that because “an IPR does not begin until it is instituted,” the denied anticipation ground was not, and could not have been, raised during the IPR. Thus, raising the ground during the pre-institution phase did not trigger estoppel with respect to that ground.

Petitioners should take this decision into account when deciding what grounds to include in a petition. If grounds denied as redundant can be raised in future IPRs or district court cases, it may be advisable to raise multiple challenges against the same claims to provoke a redundancy denial. Practitioners should monitor how this case is applied by district courts and PTAB panels going forward. The court’s interpretation of § 315(e) could make the scope of estoppel more narrow than was previously thought.