BIO and PhRMA Submit Amicus Brief In Re: Verinata Health Inc., Illumina, Inc. (U.S. Court of Appeals for the Federal Circuit)

BIO and PhRMA submitted an amicus brief in re: Verinata Health, Inc., Illumina, Inc., in support of the petition, which provides an opportunity for the U.S. Court of Appeals for the Federal Circuit to clarify the uncertainty about the scope of inter partes review (IPR) estoppel.

BIO and PhRMA say the court should grant the writ and clarify Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 374 (2016), did not restrict the scope of § 315(e) estoppel in IPRs to grounds that were both raised in a petition and instituted and bar all other estoppel as to all other grounds.

No matter how courts ultimately resolve the exact contours of § 315(e) estoppel, there is no basis on which to extend Shaw beyond its facts. Yet, district courts are doing just that, eviscerating the broad IPR estoppel Congress provided for and on which the public relied. To dispel this confusion and restore IPR estoppel to its proper scope, the petition for writ of mandamus should be granted.