"The Federal Circuit is now considering a rehearing petition challenging the Federal Circuit's recent decision in Ingenico Inc. v. IOENGINE, LLC, 136 F.4th 1354 (Fed. Cir. 2025), which narrowed the scope of Inter Partes Review (IPR) estoppel under 35 U.S.C. § 315(e)(2). Under the statute - an IPR petitioner is estopped from later re-challenging a patent's validity based upon grounds that could have been raised in the IPR:"
"You might imagine a printed publication showing the details of a prior art machine unsuccessfully asserted in an IPR. The decision would allow the same evidence to later be used in court to challenge the patent if it was transformed to an on-sale bar or public use challenge, with the document serving as evidence of what was being sold/used. In either approach, it is the same prior art reference being asserted,"
A rehearing petition challenges a Federal Circuit decision that narrowed IPR estoppel under 35 U.S.C. § 315(e)(2). The statute bars an IPR petitioner from later asserting invalidity on any ground that the petitioner raised or reasonably could have raised during the IPR. The petition contends that the panel's interpretation of "ground" allows parties to evade estoppel by relabeling identical prior-art evidence under different statutory theories not subject to IPR. The petition presents questions about whether §315(e)(2) permits such relabeling and whether §311(b) confines "grounds" to particular subparts of §§102 or 103.
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