IPR Estoppel Does Not Apply to Physical Products Described in Printed Publications Available During IPR

In Polaris Indus., Inc. v. Arctic Cat Inc., the court (District of Minnesota) held that defendant was not estopped under § 315(e)(2) from asserting three invalidity combinations involving physical vehicles, even though service manuals describing the physical vehicles had been submitted in an IPR petition or were available at the time of filing the IPR petition.

Polaris sued Arctic Cat for infringing one of its patents. In response, Arctic Cat filed an IPR, challenging certain claims of the patent on four § 103 grounds, one of which relied on a service manual of a physical vehicle. The PTAB later issued a final written decision, denying Arctic Cat’s petition. 

In the district court, Arctic Cat also sought to invalidate certain claims based on seven invalidity grounds different from those raised in the IPR petition. Of those seven grounds, three relied on physical vehicles while the other four relied on various patents or printed publications. Polaris sought a summary judgement that Arctic Cat was estopped from asserting all seven grounds.

While the court found that Arctic Cat was estopped from raising the four grounds based on patents or printed publications because they could have reasonably been raised in the IPR, the three grounds relying on physical vehicles were not estopped. The court reasoned that the vehicles themselves could not have been raised in the IPR petition. Moreover, the court recognized that even though some other courts have suggested estoppel may apply to products described in reasonably accessible printed publications, no such court has adopted such a position. Accordingly, the court held that “products embodying patents or printed publications are not subject to § 315(e)(2) estoppel.”