Response to Christa J. Laser, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis
In her article, The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis, Christa Laser argues that the estoppel provisions of the America Invents Act (AIA) apply only to grounds that could have been raised once the petition to institute an administrative post-issuance proceeding has been granted, but not to any grounds which could have been raised, but for whatever reason weren’t, in such a petition. In Laser’s view then, the estoppel provisions provide only a narrow scope of protection to patentees, and permit the patent challengers to file multiple challenges to issued patents if and when their earlier challenges are unsuccessful. Laser’s arguments are clear, forceful, and well–supported, but at the end of the day, in my view, wrong. Although she does an admirable job engaging with statutory construction doctrine generally and the legislative history of patent post-issuance proceedings specifically, ultimately the analysis falls short because it gives insufficient weight to the legal background against which the AIA was enacted. Additionally, Laser seemingly adopts the received wisdom that more post-issuance review is better, and therefore (though it is clearly a secondary consideration) Congressional policy would be better served when fewer barriers to post-issuance review are erected. However, it is not necessarily true that more rounds of review means better patents or that they lead to a more stable and predictable system. And since such a system was a primary Congressional goal when it enacted the AIA, statutory interpretation that takes us farther away from that goal should receive at least some skepticism. Read More.