In an IPR proceeding brought by Shaw, the PTAB instituted the IPR based on certain grounds, but refused to institute the IPR on other grounds, because such grounds were “redundant” of the grounds on which the IPR was granted. Shaw appealed that decision, and, alternatively, sought a writ of mandamus. The Federal Circuit, however, affirmed the PTAB’s decision to not institute the IPR on the basis of certain grounds being redundant, because the Federal Circuit has no jurisdiction to review the PTAB’s decision not to institute an IPR. For the same reason, the Federal Circuit denied Shaw’s petition for writ of mandamus. One of Shaw’s arguments for granting its writ was that it would be estopped from asserting the “redundant” argument later in litigation under 35 U.S.C. § 315(e). The Federal Circuit, however, made clear that estoppel would not apply to arguments that were not instituted by the PTAB. Because the redundant arguments were not instituted, they did not become part of the IPR and therefore they will not be subject to estoppel in a later proceeding.
Automated cross-appealed another issue. Shaw had brought a second IPR which was more than one year after Automated had served its lawsuit against Shaw. But, Automated had dismissed the lawsuit without prejudice. Thus, the fact that Shaw filed the second IPR more than one year after the service of the lawsuit does not preclude the IPR, because the dismissal without prejudice leaves the parties as though the action had never been brought.
Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., Case Nos. 2015-1116, -1119 (March 23, 2016); Opinion by: Moore, joined by Wallach; concurring opinion by Reyna; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.