In a substantive ruling by the Federal Circuit, new guidelines have been set regarding the relationship between inter partes review (IPR) proceedings and district court patent challenges. This decision has important ramifications for IPR estoppel and how parallel patent disputes should be approached and managed.
In Ingenico Inc. v. Ioengine, LLC, Ioengine accused Ingenico Inc. of infringing flash drive patents in Delaware. This led to Ingenico challenging the patents' validity at both the district court and the PTAB. After defining the term "grounds" with respect to estoppel, The Federal Circuit ruled that Ingenico wasn't prohibited by IPR estoppel to argue that the patents are invalid for having been available to the public already, especially since it was relying on a physical device as prior art.
The decision could lead to a trend where more IPRs are expected. Finnegan partner Forrest Jones told Law360 that, "In a vacuum, I might expect [an uptick]." He added that, "More than seeing any particular swing, I would expect that this decision is going to be very explicitly addressed by the director with the new bifurcated discretionary denial process."
Forrest notes that the decision may also affect whether the district court decides to stay a case, since some judges may find it efficient to let the PTAB proceedings play out.
"I would imagine if in order to get the IPR instituted, you're having to do a stronger stipulation than Sotera," he said. “On the district court side, that's probably going to be taken into account by most judges too.”
Read “Fed. Circ. Veers from USPTO Agenda in IPR Estoppel Ruling”
