IP Newsflash

A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding the defendant’s “misleading” statements about the effect of estoppel, made when seeking a stay pending the outcome of IPR proceedings.

A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had sought summary judgment that its asserted claims were valid based on the defendant’s failed IPR petition, arguing that no reasonable jury could find the asserted claims invalid by clear and convincing evidence in the district court based on defendant’s alleged “second-string” art that defendant did not assert in the IPR. In denying the motion for summary judgment, the court explained that the plaintiff had not even addressed the strength of defendant’s invalidity theories, and as such, there remained material issues of fact for trial.

A Central District of California judge has clarified his prior ruling on summary judgment that estoppel under 35 U.S.C. § 315(e)(2) applies to certain obviousness invalidity grounds raised by Defendants. In the prior ruling, the court found that Defendants could not side-step estoppel by characterizing a reference previously used in an inter partes review (IPR) as prior art that was “known or used by others” pursuant to pre-AIA § 102(a)—i.e., an invalidity ground not subject to estoppel. In doing so, the court estopped Defendants from raising all but one obviousness invalidity ground.

The Federal Circuit recently upheld a district court’s decision to tax a patent infringement plaintiff with its opponent’s attorneys’ fees based on an inadequate presuit investigation into infringement, even though the patent was invalidated before the court reached the issue of infringement.

On January 12, 2018, the Federal Circuit vacated and remanded a district court summary judgment determination of no invalidity, as well as jury findings of willfulness and damages, in its decision in Exmark Manufacturing, Co. v. Briggs & Stratton Power Products Group, LLC. In particular, the Federal Circuit held the district court erred when it granted summary judgment of no invalidity to Exmark Manufacturing, Co. (“Exmark”) based solely on the fact that its patent survived multiple reexaminations involving the same art. The Federal Circuit also found insufficient evidence to support the jury’s damages award, and held the district court abused its discretion when it excluded certain evidence related to willfulness.

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.