Far-Reaching Effect of IPR Estoppel Dooms Invalidity Defense Based on Prior Art Product

Jan 29, 2020

Reading Time : 2 min

The case began in 2013 when Wasica filed a patent infringement suit against Schrader for allegedly infringing claims related to monitoring air pressure in tires. In response, Schrader filed petitions for IPR challenging the claims of the asserted patent. The district court stayed the case pending IPR resolution. Following a final written decision and appellate review by the Federal Circuit, several claims survived the IPR. The district court then lifted the stay, and Wasica proceeded on allegations of infringement of only one of the surviving patent claims. Schrader raised three obviousness defenses, each relying on a prior art product—namely, tire pressure sensors manufactured for the Chevrolet Corvette—in combination with a patent or a combination of patents and printed publications.

Wasica moved for summary judgment on all of Schrader’s obviousness defenses, arguing that Schrader was estopped under 35 U.S.C. § 315(e)(2) from asserting obviousness grounds that could have been raised in the IPR. Wasica argued that all of the patents and printed publications relied on by Schrader either were, or could have been, raised during the IPR. Wasica further contended that one of the printed publications disclosed all of the relevant features of the prior art product. Schrader countered that estoppel did not apply because the IPR statute does not allow challenges based on prior art products and that, as such, its obviousness defense could not have been raised in the IPR.

The district court agreed with Wasica. First, the court acknowledged the split among district courts regarding the scope of § 315(e)(2) estoppel. Next, the court explained that the IPR statute distinguishes between the grounds that may be raised (under § 102 and § 103) and the evidence that can be used to support those grounds (patents and printed publications). The court then found that the prior art product was “materially identical (i.e., disclose[d] the same claim elements)” to a printed publication that reasonably could have been raised in the IPR. Thus, the court ruled that the grounds reasonably could have been raised, and so Schrader’s obviousness defenses were estopped.

Practice Tip: Courts continue to wrestle with how to apply IPR estoppel under § 315(e)(2) to prior art products asserted in support of defenses raised under § 102 or § 103. Several decisions have construed estoppel narrowly and have held that it cannot be applied to prior art products, while other decisions have considered whether there are substantive differences between the prior art product and printed publication that would preclude the application of estoppel. This area of law continues to develop, but until the Federal Circuit rules on the issue, litigants should consider their strategies carefully. Patent owners who can file suit in more than one district should consider how the potential forums have applied estoppel to a prior art product in previous rulings. Accused infringers should consider whether pursuing an IPR may subsequently foreclose defenses that are based on a prior art product.

Wasica Fin. GmbH v. Schrader Int’l, Inc., 13-cv-01353 (D. Del. Jan. 14, 2020) (Stark, C.J.)

Share This Insight

Previous Entries

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.