On March 23, 2016, the Federal Circuit addressed the scope of the estoppel provision for inter partes reviews (“IPRs”) contained in Section 315 of the American Invents Act. The Court relied on the plain reading of “during” to find that § 315(e) actually prohibits future estoppel on grounds for which an IPR was sought, but rejected—even if merely based on redundancy Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 2015-1116 (“Slip Op.”). In Shaw Industries, Shaw sought two separate IPRs on Automated Creel Systems’ patent, and the PTAB instituted review on all asserted claims, but not on all grounds. Specifically, the PTAB declined to institute review on certain claims that included an “interposing” limitation based on U.S. Patent No. 4,515,328 (“the Payne-based ground”). The PTAB refused to institute the Payne-based grounds as being “redundant” in light of the…
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