is an associate in Baker Botts‘s Intellectual Property group, where he serves clients as a creative advocate and practical advisor in a variety of intellectual property practice areas across a wide range of technological fields. In particular, Mr. German has significant experience in patent litigation, patent prosecution and pre-litigation consulting for a diverse set of clients.
For more information or to contact Mr. German, please visit his Firm Website Page.
Partial institutions lessen the value of estoppel because the petitioner avoids estoppel on claims that were challenged but not instituted. The PTAB never issues a final written decision for these challenged-but-not-instituted claims. And because estoppel only applies to claims receiving a final written decision, these non-instituted claims escape the estoppel statute See, e.g., Shaw Industries Group v. Automated Creed Systems, 817 F.3d 1293, 1300 (Fed. Cir. 2016). In effect, the PTAB’s current practice saves a petitioner from estoppel on claims it had little chance of invalidating. Thus, under the current practice, a petitioner currently only risks estoppel on claims that it stands a good chance of invalidating. But if the Supreme Court decides as expected, estoppel will attach to all challenged claims of an instituted IPR. Final written decisions will more often include claims found valid, and a petitioner will no longer be able to avoid estoppel for some claims by relying on the PTAB to sort strong challenges from weak ones at the institution stage.