Ingenico: Federal Circuit Clarifies Only “Grounds,” Not the Prior Art They Rely On, are Estopped After an IPR

With the recent discretionary denial changes at the PTAB, one point of emphasis has been petitioner's stipulations not to pursue certain grounds or references in the parallel district court litigation (most commonly a Sotera or Sand stipulation). The Acting Director has placed an emphasis on looking at how much reduction in overlap there will be in practice, particularly where there is system art at issue in the district court. See, e.g., Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, IPR2024-01206, IPR2024-01207 & IPR2024-01208, Paper 19 (PTAB March 28, 2025). The Federal Circuit has now weighted in on the district court side, to clarify what grounds and art are–and are not–subject to estoppel without a stipulation.

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