Today the Federal Circuit held that a party joining an existing IPR is not subject to estoppel on any grounds other than those that were actually raised. See the opinion below.
Before this, a plaintiff could argue that a defendant who joined an in-progress IPR was estopped on any anticipation or obviousness arguments that "reasonably could have [been] raised" in the IPR.
The Court here held, in short, that because a defendant joining an existing IPR is not allowed to add new grounds at all, it cannot be estopped except on those grounds actually raised.
It relied on the Facebook decision we talked about earlier this month, which held that a party joining an IPR cannot add new grounds to an existing IPR.
Today's holding changes the cost/benefit analysis for defendants looking at joining an already-instituted IPR as a party. It means that a defendant joining an instituted IPR gets all of the previous benefits (e.g., a chance to keep the IPR alive if the other parties settle, and to appeal it) with almost none of the risks.
Instead of facing an argument that they should most or all of their prior art arguments, any estoppel will be limited to the instituted grounds, which are typically narrow. I expect this will increase the number of parties joining existing IPRs.
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