An article by Washington, D.C. partner Bob Stoll was cited in the House Judiciary Committee Report on the Innovation Act, presented to the 114th Congress, first session. The report, together with dissenting views, recommended the passing of bill (H.R. 9) to amend title 35, United States Code, and the Leahy-Smith America Invents Act (AIA).
Bob’s cited article, published in the 2012 Patently-O Patent Law Journal, is titled, “Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.” The article refers to the new post-grant-review procedure within the U.S. Patent & Trademark Office (USPTO), created by the AIA, that allows a petitioner to challenge the validity of one or more claims of an issued patent in an adversarial review proceeding before the expert agency. The AIA contains an estoppel provision that prevents challenging of the same patent claim by the petitioner.
Bob responded to critics arguing to limit the estoppel, stating that this would encourage “petitioner gamesmanship” to the detriment of the courts, the USPTO and the patent owner.