Judge Denise Casper of the District of Massachusetts recently issued an order concluding that estoppel did not bar prior art from invalidity disclosures served before the filing of the IPR petition because the prior art was not raised during the IPR.
Last year, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. articulated that a petitioner is not estopped from relying on a ground on which the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR). 817 F.3d 1293, 1297-1300 (Fed. Cir. 2016). District courts have since relied on the rationale from Shaw to interpret the scope of the IPR estoppel provisions set forth at 35 U.S.C. § 315(e). The interpretation has not been consistent. In fact, there is a split in district courts on whether the language from Shaw suggests that grounds not raised in an IPR petition are immune from estoppel. Compare Verinata Health. Inc. v. Ariosa Diagnostics. Inc., No. 12-CV-05501-SI, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017) (applying a broad reading of Shaw to find that estoppel applies to only grounds that are instituted by the PTAB), with Douglas Dynamics, LLC v. Meyer Prod. LLC, No. 14-CV-886-JDP, 2017 WL 1382556, at *4 (W.D. Wis. Apr. 18, 2017) (applying a narrow reading of Shaw to find that estoppel applies to non petitioned grounds that the defendant chose not to raise in its IPR petition).
A district court judge recently addressed the scope of estoppel for a petitioner in an inter partes review (IPR). Specifically, the court clarified the meaning of a “ground for invalidity” as it relates to the estoppel effect of 35 U.S.C. § 315(e).
Clearlamp, LLC filed a patent infringement action against LKQ Corporation (LKQ), who, in turn, counterclaimed seeking declaratory judgments of noninfringement and invalidity. During the pendency of this case, the parties participated in an inter partes review (IPR), during which the Patent Trial and Appeal Board found that several claims of the patent-at-issue were unpatentable as obvious in view of three prior art references. In the instant opinion, the Court grants LKQ’s motion for summary judgment on invalidity and denies the parties’ remaining motions on validity and noninfringement. The key issue addressed by the Court in deciding these summary judgment motions was whether LKQ was estopped under 35 U.S.C. § 315(e)(2) from combining the datasheet of a prior art product, which was not raised during the IPR proceeding, with the three prior art references used to invalidate other patent claims.