January 2018
Intellectual Property & Technology Law Journal
By Linda A. Wadler; Barbara R. Rudolph, Ph.D.; Meredith H. Boerschlein
In 2012, the Leahy-Smith America Invents Act (AIA) created new procedures for challenging the validity of U.S. patents before the U.S. Patent and Trademark Office (PTO) as an alternative to civil litigation in federal district courts. In the most commonly used type of these proceedings, inter partes review (IPR), a party may petition the Patent Trial and Appeal Board (PTAB) at the PTO to institute an IPR to establish that one or more claims of the patent are invalid as anticipated or obvious under 35 U.S.C §§ 102 or 103. The PTO restricts the petitioner to rely on only printed publications and patents dated before the effective filing date of the challenged U.S. patent in the IPR proceeding. After receiving a petition, the PTAB must decide whether to institute an IPR by determining whether one or more of the grounds presented in the petition provide a "reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition."1 If the IPR is instituted, the PTAB must issue a final written decision within a year (or 18 months "for good cause shown") of institution.
An important consequence of an IPR proceeding is the statutory estoppel that is triggered when the PTAB issues a final written decision. That estoppel forecloses a losing IPR petitioner from reasserting the same unpatentability arguments with respect to the same patent claims in any later proceeding brought in a U.S. district court or the U.S. International Trade Commission (ITC). More specifically, 35 U.S.C. § 315(e)(2) provides that the IPR petitioner, real party in interest, or those in privity with the petitioner are prohibited from later asserting in a district court action or ITC proceeding any invalidity ground that the petitioner "raised or reasonably could have raised" during that IPR.
The legislative history of the AIA suggests that the estoppel provision was intended to prevent the same party from repeatedly challenging the validity of a patent based on patents and printed publications.2 Consequently, parties often request, and courts sometimes grant, motions to stay district court litigation until the pending IPR proceeding resolves issues of patentability.
Thus far, stays for concurrent IPR proceedings have been infrequent in biosimilar patent infringement litigation under the Biologics Price Competition and Innovation Act of 2009 (BPCIA). Although district courts have seen only a handful of biosimilar cases under the BPCIA to date, with an increasing number of abbreviated biologic license applications in the Food and Drug Administration’s (FDA) queue, that number is likely to rise. Accused infringers may start to file IPR petitions more readily in the future, but the evolution of IPR estoppel, and the current complexity in evaluating whether estoppel will apply, may influence how parties approach this issue in future biosimilar disputes.
For these reasons, this article examines how district courts have interpreted the scope of estoppel resulting from IPR proceedings concerning the same patent(s). The trends discussed below may provide some guidance for strategic decisions on the part of both patent owners and patent challengers.
Estoppel is triggered by the PTAB’s issuance of a final written decision for the IPR proceeding.3
A thought-provoking issue of timing was presented in Senju Pharmaceutical Co., Ltd. v. Lupin Ltd.4 In Senju, both IPR proceedings and district court litigation were proceeding concurrently until the PTAB issued a final written decision in the IPR after completion of the district court trial, but before the trial court had issued its decision. The trial court was then asked to apply statutory estoppel because the defendants were asserting invalidity counterclaims and defenses based on the same references they had relied on in the IPR proceedings.5
In opposition, the defendants argued that statutory language differences between 35 U.S.C. § 315(e)(1) and § 315(e)(2) prevented estoppel from attaching after completion of a district court trial. Specifically, defendants contended that, under Section 315(e)(2), which states that the Petitioner "may not assert" the same grounds in a district court case, they were not barred from "maintaining"6 a claim or defense that already had been fully asserted in district court because all that remained was for the trial court to issue its decision.7 In response, the plaintiff-patentee argued that the defendants were, in fact, "asserting” the same grounds, within the meaning of Section 315(e)(2), by continuing to ask the court to find claimed subject matter invalid on same grounds and art.8 The case was settled before the district court decided the estoppel issue.
Interestingly, one district court prevented a defendant in a patent infringement case from raising unpatentability contentions that were raised in an IPR even though that IPR had not resulted in a final written decision. Thus, in Oil State Energy Services, L.L.C. v. Trojan Wellhead Protection, Inc.,9 the court found that a defendant’s decision to petition for IPR did not provide good cause for belated supplementation of its invalidity contentions to add a theory related to prior art raised in an IPR because any possible "estoppel arises from [the defendant’s] own decision to petition for IPR."
Practice Tip. In the face of concurrent IPR and district court proceedings, both patent owners and IPR petitioners should give careful consideration to potential estoppel effects well before the PTAB issues its final written decision. In addition, the IPR petitioner should consider promptly including unpatentability grounds from its IPR petition in district court invalidity contentions and expert reports to maximize its chances of presenting them at trial in district court.
There appears to be no dispute that estoppel in district court litigation does not apply against patent claims for which the IPR was not instituted.11 Thus, any and all arguments of unpatentability of non-instituted patent claims remain available to litigants in district court proceedings.12
Estoppel does not apply against grounds raised in petition, but denied institution on procedural grounds of redundancy.13 In Shaw, the PTAB denied institution of an IPR on claims based on alleged anticipation by the Payne patent, but did institute an IPR on other grounds raised in the same petition. The PTAB stated, without making any specific findings, that the Payne allegations were “redundant” of two other grounds in the petition.14 In finding no estoppel, the Federal Circuit reasoned that because an IPR does not begin until it is instituted, Shaw did not raise, nor could Shaw have reasonably raised, the Payne patent during the inter partes review.15 Thus, the Court relied on the word "during" in the plain language of the estoppel statute—"on any ground the petitioner raised or reasonably could have raised during that inter partes review"16—to prevent estoppel in Shaw’s circumstances.
The Federal Circuit reiterated in HP17 that "noninstituted grounds do not become part of the IPR." Therefore, estoppel is not applicable because noninstituted grounds were not "raised" and, because institution was denied, "could not be raised" during the IPR.18 As in Shaw, the noninstituted grounds in HP were included in the petition, but denied review based on redundancy.
Practice Tip. Strategic consideration should be given when preparing an IPR petition to include all persuasive Section 102 or Section 103 invalidity arguments in the petition based on printed publications and patents. If institution of any of the grounds is denied, the current Federal Circuit case law makes it unlikely that estoppel would prevent future challenges based on those denied grounds. Care should be taken in drafting the unpatentability grounds in the petition to provide enough detail to encompass all anticipation or obviousness arguments based on the prior art with sufficient specificity to provide the PTAB with a basis to declare institution. One district court has indicated that either the inclusion of bare-bones grounds in an attempt to game the system or the later presentation of an argument different enough from what was presented in the petition to constitute a new ground would likely give rise to estoppel:
[A] defendant could assert numerous barebones grounds in an IPR petition, knowing that those grounds would be rejected by the PTAB, but thus [be] preserved for later use in the district court. I agree with [plaintiff]: invalidity grounds asserted in bad faith would be subject to estoppel;
and
[T]he defendant is not locked into the precise argument made in its IPR petition. But if the new theory relies on different, uncited portions of the prior art, attacks different claim limitations, or relies on substantially different claim constructions, then the new theory is tantamount to a new invalidity ground, and the court will treat it like a non-petitioned ground subject to estoppel.19
The AIA, at 35 U.S.C. § 315(e)(2), sets forth a “raised or reasonably could have raised” standard for estoppel. But not all courts have agreed on what that standard embraces. Although the Federal Circuit in Shaw and HP addressed the scope of estoppel under certain circumstances, it did not provide clear boundaries or guidelines as to how to apply the standard. Consequently, different district court decisions have interpreted Shaw and HP in different ways.
District Court Decisions Broadly Exempting from Estoppel Any Ground Not Raised During Post-Institution IPR Proceedings
The Federal Circuit’s Shaw decision has been interpreted by some district courts to mean that estoppel applies only to grounds that are instituted, so grounds not raised during the post-institution phase of the IPR are exempt from estoppel. For example, the Northern District of California court has interpreted Shaw to "limit[ ] IPR estoppel to grounds actually instituted [to] ensure[ ] that estoppel applies only to those arguments, or potential arguments, that received … proper judicial attention."20 Consistent with Shaw, the California court permitted assertion of grounds that were contained in the petition, but not instituted, when those grounds involved prior art entirely different from that before the PTAB during the post-institution proceedings.21 In addition, the Verinata court indicated that in the future it would allow the defendant to assert in the district court proceeding prior art that was presented during the IPR if it is combined with art that was not presented during the IPR proceeding.22
Similarly, one District of Delaware judge has interpreted Shaw as limiting estoppel to only invalidity grounds on which IPR was instituted, and permitted invalidity arguments in the district court proceedings on publicly available prior art references that had not been part of the instituted IPR or IPR petition.23 The court expressly recognized that the defendant could have raised the additional invalidity grounds in its IPR petition because they were based on public documents. The opinion acknowledged that the extension of Shaw to allow arguments on publicly available prior art never presented to PTAB "confounds the very purpose of the parallel administrative IPR proceeding," but noted that the court could not "divine a reasoned way around the Federal Circuit’s interpretation in Shaw."24 The California and Delaware courts’ interpretation of Shaw as requiring such a broad exemption to estoppel, however, currently is held by only a few district courts.
District Court Decisions Finding Estoppel for Grounds That "Reasonably Could Have [Been] Raised" in the IPR, But Were Not in the Petition
On the other hand, several district courts have found estoppel for invalidity arguments premised on prior art that was not included within the IPR petition. For example, a split has arisen even within the single district court of Delaware on this issue. A few months after the decision in Intellectual Ventures discussed above, a different judge in the District of Delaware applied the statutory estoppel provision more broadly. Where a defendant sought to invalidate a patent based on prior art combinations of which it was aware before it filed an IPR petition but did not include in that petition, the Delaware court held that the defendant was estopped from asserting those references because they "reasonably could have been raised before the PTAB."25 The defendant argued that it should not be estopped because it had joined previously filed IPR proceedings and it would have been unreasonable for it to have raised invalidity arguments that were not presented in the already instituted IPRs it sought to join.26 Nevertheless, the court reasoned that "[a]llowing [the defendant] to raise arguments here that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of an IPR without the downside of a meaningful estoppel."27
Practice Tip. A decision to maximize the chances of being able to join another party’s pending IPR by filing a petition that asserts highly similar grounds for invalidity should be weighed against the risk that the joining party is likely to be subject to the same scope of estoppel as the original petitioner.
The legislative history of the AIA indicates that the "reasonably could have raised" language was intended to extend the estoppel "to that prior art which a skilled searcher conducting a diligent search reasonably could have been expected to discover," but not to prior art "only a scorched earth search" would have found.28 Accordingly, several district courts have found that estoppel applies to any ground that reasonably could have been raised based on prior art that could have been found by a skilled searcher’s diligent search.29
The Clearlamp court held that the plaintiff, as the proponent of the estoppel argument, had the burden to show that the defendant could have found the prior art at issue before filing its IPR petition. The court suggested that "[o]ne way to show what a skilled search would have found would be (1) to identify the search string and search source that would identify the allegedly unavailable prior art and (2) present evidence, likely expert testimony, why such a criterion would be part of a skilled searcher’s diligent search."30 Thus, under Section 315(e)(2), prior art (printed publications or patents) can be used in district court litigation only if it could not have been found by a skilled searcher performing a diligent search before the IPR petition was filed.31
The Wisconsin court in Douglas Dynamics similarly extended estoppel to encompass invalidity grounds based on prior art that could have been found by skilled searcher’s diligent search, even where that art was not asserted in the IPR petition.32 The Wisconsin court understood the legislative history to suggest that Congress intended IPR to serve as a complete substitute for district court validity litigation, reasoning that if a defendant chooses to pursue an IPR option, "it cannot expect to hold a second-string invalidity case in reserve in case the IPR does not go the defendant’s way."33
The Eastern District of Texas and Eastern District of Virginia courts have recognized that trial courts have interpreted the Federal Circuit’s decisions on estoppel in Shaw and HP in competing ways, and adopted a “narrow reading of Shaw.” The Texas court reads Shaw and HP narrowly to exempt an IPR petitioner from estoppel only where the PTAB precludes a petitioner from raising an invalidity ground for purely procedural reasons, such as redundancy.34 The Biscotti court also stated that the defendant should be estopped from presenting at trial any patents or printed publications that a skilled searcher’s diligent search reasonably could have been expected to find.35 Similarly, the Eastern District of Virginia court has found that estoppel applies to both instituted grounds at the IPR and grounds that the petitioner could have raised in the IPR petition or during the instituted IPR itself.36 The Cobalt Boats court explained that a "broad reading of Shaw renders the IPR estoppel provisions essentially meaningless because parties may pursue two rounds of invalidity arguments as long as they carefully craft their IPR petition. It would waste this Court’s time to allow a stay for a year during IPR proceedings and then review invalidity arguments that Defendants could (and perhaps should) have raised in their IPR petition."37 The defendants’ arguments that certain prior art references were not reasonably available through searching were rejected based on evidence that specified searches in Google Patents using terms from the patent revealed those references in the top 10 search results.38 A similar argument with respect to the availability of product manuals was found not credible because the court did "not believe that Defendants were unaware of a larger competitor’s product lines[.]"39
Similarly, the Northern District of Illinois court has agreed with a narrow application of Shaw and HP, explaining that "'due process and fairness' concerns support the conclusion that noninstituted grounds do not give rise to estoppel[ ]" because if mere denial of an IPR petition gave rise to estoppel, the petitioner would be deprived of a full opportunity to be heard on the estopped ground, despite properly raising the invalidity contention with the PTAB.40 The Illinois court, however, found that estoppel did apply to non-petitioned grounds with respect to patent claims for which a final written decision in IPR has issued when they reasonably could have been raised.41 The court reasoned that estopping a party in such a situation is fair (as the party has only itself to blame for failing to raise the claim), common, promotes efficiency, and reduces the burden on the federal courts.42 In Oil-Dri Corp., the defendant’s search expert’s concession that a "reasonably skilled patent searcher may have identified [four prior art references at issue]," resulted in estoppel for those references.43 A Wisconsin district court recently agreed with the views espoused in the Oil-Dri Corp. decision.44
Practice Tip. Until the Federal Circuit resolves this split among districts, IPR petitioners and patent owners alike should be aware of regional interpretations of Shaw and HP in any concurrent or potential litigation. Depending on where a case is filed, litigants may find themselves estopped in ways they might not have anticipated. Moreover, in preparing an IPR petition, consideration should be given to conducting a reasonable, skilled search for prior art patents and printed publications, documenting evidence of that search to ward against estoppel based on art that was not uncovered in that search, and including all grounds in the petition that the patent challenger wants to preserve for use in a future proceeding. Patent owners should consider collecting evidence on search strings for use with expert testimony arguing that specific prior art would have been found in a diligent search by a skilled searcher.
Multiple district courts have applied estoppel to smaller subsets of a larger combination of prior art references that were the basis for an obviousness argument considered by the PTAB during an IPR. For example, in Biscotti, the court found that estoppel should apply to invalidity arguments based on a subset of the grounds assessed and rejected by the PTAB. So where the IPR was instituted on a combination of three pieces of prior art, the defendant was estopped from invalidity arguments based on any one of those references alone, or a combination of any two of those references.45 Similarly, where the IPR was instituted on grounds asserting obviousness over (1) reference A in view of reference B and (2) reference C in view of reference B, defendants were estopped from asserting in district court not only those combinations, but also obviousness over either reference A or reference C standing alone.46 A Wisconsin court reasoned that any subset or alternative combination of the instituted references is barred because such subsets or combinations could have been raised during the IPR.47
Interestingly, even the California court in Verinata (which otherwise limited estoppel to grounds that actually were instituted) found that the defendant was estopped from asserting obviousness based on a combination of two references, where the PTAB expressly had declined to institute an IPR on that ground. The PTAB characterized the declined ground as redundant of an instituted ground contending obviousness based on the combination of the same two references with a third reference.48 The Verinata court found that estoppel attached to any subset of the combination of references that was the basis for the instituted grounds that also did not include new art not presented during the IPR.49
Practice Tip. When alleging obviousness based on a combination of prior art in an IPR petition, carefully consider inclusion of all strong arguments based on all possible combinations and subsets of those references.
IPR estoppel generally does not apply to prior art physical products. After all, under 35 U.S.C. § 311(b) a patent challenger can file an IPR petition "only on the basis of … patents or printed publications."50 But, what if a prior art physical product is cumulative of a printed publication raised in IPR? Different district courts appear to view estoppel in that situation differently. The court in Clearlamp found no estoppel for physical prior art, reasoning "[m]erely being redundant to a ground that could have been asserted during inter partes review does not estop the alleged infringer from relying upon a ground based upon prior art that was not reasonably available during inter partes review."51
However, a California court found no estoppel where "the physical machine itself discloses features claimed in the #808 patent that are not included in the instruction manual," implying that if the machine did not disclose additional claimed features from the instruction manual, estoppel might apply.52 In Star Envirotech, it was undisputed that the instruction manual did not fully disclose relevant details about the product. The court noted that disassembly of the machine could shed light on whether a claim limitation was met.
Practice Tip. Consideration should be given as to whether prior art physical product’s features can be shown using the product itself, without resorting to public written product manuals, and what information, if any, the physical product conveys that is not included in publicly available printed publications describing that product.
The IPR estoppel statute, 35 U.S.C. § 315(e)(2), states that estoppel applies to the "petitioner in an inter partes review … or the real party in interest or privy of the petitioner[.]" The PTO’s 2012 "Patent Trial Practice Guide" concerning post-grant proceedings instructs that, without more, membership in a joint defense group in a patent infringement suit that includes a petitioner does not automatically transform an otherwise unrelated entity to a "real party-in-interest" or "privy" of the petitioner.53
In the context of a reexamination proceeding, the PTO has further clarified that "simply benefiting from a reexamination … does not equate with participation in a reexamination, and thus does not transform the co-defendants into real parties in interest."54 The PTO explained that to be named as a real party-in-interest, a party "must participate in some manner in the request for reexamination." The PTO further specified that "the concomitant use of the same counsel, defenses and/or counterclaims" alone is insufficient; instead there must be "evidence that the activities were conducted with an intent to file an inter partes reexamination[:]"
even searching for prior art, review of possibly useful art with respect to the patent claims, preparation of an invalidity defense based on found and evaluated art to support a litigation defense, and financial support to carry out a litigation defense does not amount to participation in a request for reexamination, where the activities were conducted with only an intent to defend the litigation suit.55
Thus, the fact that there are other defendants in a related litigation who are not parties to an inter partes review does not automatically make them privies of the petitioner.56
Several patent owners unsuccessfully have attempted to assert judicial estoppel against IPR petitioners in later district court litigation. Judicial estoppel is intended to prevent a party from prevailing in one stage of a case by asserting one position and then relying on a contrary position later in the case.57 For example, in Verinata, the patent owner asserted that the defendants could not argue that pending IPR petitions would simplify the litigation through statutory estoppel to justify a stay of the litigation, and then later argue that IPR estoppel does not apply. The district court, however, disagreed, seeing nothing inconsistent with defendant’s arguments to stay the litigation and its wish to maintain invalidity defenses for the future. The court further excused any inconsistency because the "Federal Circuit has only recently begun to clarify the scope of IPR estoppel[.]"58
Similarly, in Depomed, Inc. v. Purdue Pharma L.P.,59 the patent owner argued that the defendant should be judicially estopped from litigating its invalidity positions because it had previously argued, in order to obtain a stay of the litigation, that statutory estoppel resulting from a pending IPR would simplify disputed issues before the district court. The court declined to apply judicial estoppel, finding that the defendant’s positions were consistent. The post-IPR viability of its defenses resulted from the Federal Circuit’s decisions on statutory estoppel, and were not adopted in bad faith: "[w]hile the Court and [the plaintiff] may have preferred a greater simplification of issues, the IPR proceedings did reduce the number of prior art references and defenses that [the defendant] can now raise."60
In a non-precedential opinion, the Federal Circuit recently affirmed a PTAB decision finding that the patent owner was collaterally estopped from challenging the PTAB’s decision that the claims of one patent are invalid as a result of a district court’s decision invalidating claims in a related patent.61 Specifically, every challenged patent claim before the PTAB contained one or more terms that had been the bases for declaring other claims in a related patent invalid as indefinite, non-enabled, or lacking written description support in a previous district court litigation.62 The Federal Circuit noted that "where a patentee has had a full and fair opportunity to litigate the validity of a patent in one proceeding, but is ultimately unsuccessful, the patentee is collaterally estopped from relitigating the validity or patentability of the patent in a later proceeding."63 The court further determined that any differences between the claims of the patent held invalid in the district court litigation and those at issue in this appeal were "not material such that those differences would affect the patentability of the challenged claims."64 Although the patent before the PTAB was a continuation-in-part of the patent that was the subject of the earlier district court litigation, the court noted that any discussion in the specification concerning the terms at issue "remains nearly identical" to the district court patent, and the patent owner’s briefs "point[ed] to no evidence in the additional disclosures that addresses the § 112 issues."65
The increasing complexity in evaluating whether estoppel will apply has led some district courts to question whether a district court action should be stayed pending the outcome of an IPR at all.66 District courts often condition their approval of a stay of district court litigation on a stipulated agreement by the patent challengers to be estopped from asserting certain invalidity defenses against any patent claims surviving IPR proceedings.67
Practice Tip. District courts and the parties may try to reduce future uncertainty regarding the scope of IPR estoppel through such stipulated estoppel agreements. Careful consideration should be given when drafting the scope of the stipulated estoppel. Options with varying scope include identification of the specific prior art and arguments that are estopped, limitation to the grounds upon which a final written decision in the IPR is issued, or parroting the statutory language of 35 U.S.C § 315(e)(2). Whether or not to agree to be bound by estoppel of an IPR initiated by a co-defendant—to which you are not a party—as a condition of the stay also may warrant deliberate consideration.
While stays in biosimilar litigation for concurrent IPR proceedings currently are uncommon, the law of IPR estoppel still is evolving. Litigants should carefully consider the possible ramifications of estoppel in making strategic decisions regarding patented biologic products.
Endnotes
1 35 U.S.C. § 314(a).
2 157 Cong. Rec. S1360-94 (daily ed. Mar. 8, 2011) (statement of Sen. Grassley) (purpose is to "ensure that if an inter partes review is instituted while litigation is pending, that review will completely substitute for at least the patents-and-printed-publications portion of the civil litigation.")
3 See 35 U.S.C. § 315(e)(2) (IPR petitioner may not assert, in a civil action or ITC proceeding, any ground that the petitioner raised or reasonably could have raised during an IPR "that results in a final written decision.:" (emphasis added)); Star Envirotech, Inc. v. Redline Detection, LLC, Case No. SACV 12-08161 JGB, 2015 WL 4744394, at *3 n.3 (C.D. Cal. Jan. 29, 2015) ("IPR estoppel attaches once the PTAB issues a final written decision."); VirnetX, Inc. v. Apple Inc., Case No. 14-MC-80013 RS (NC), 2014 WL 6979427, at *2 (N.D. Cal. Mar. 21, 2014)(estoppel applies once there is a final written decision and not before that time).
4 Senju Pharm. Co., Ltd. v. Lupin Ltd., C.A. No. 14-667 (D.N.J).
5 Id. at D.I. 301 at 2.
6 The statutory estoppel statute for future proceedings before the PTO, 35 U.S.C. § 315(e)(1), uses the words "may not request or maintain a proceeding … ," instead of "assert in a civil action." (Emphases added).
7 Id.
8 Id. at D.I. 306.
9 Oil State Energy Servs., L.L.C. v. Trojan Wellhead Protection, Inc., No. 6:12-CV-611 (E.D. Tex.).
10 Id., No. 6:12-CV-611, D.I. 138, Order at 6 (E.D. Tex.Dec. 17, 2014).
11 Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016) ("The validity of claims for which the Board did not institute inter partes review can still be litigated in district court."); Princeton Dig. Image Corp. v. Konami Dig. Entm’t Inc., No. 12-1461-LPS-CJB, 2017 WL 239326, at *4 (D. Del. Jan. 19, 2017) (finding no estoppel for invalidity arguments concerning patent claims 14, 19 and 20 where those patent claims were not the subject of a final written decision in an IPR proceeding.).
12 See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1052 (Fed. Cir. 2017).
13 Shaw Indus. Grp., Inc. v. Automated Creel Sys. Inc., 817 F.3d 1293, 1299-1300 (Fed. Cir. 2016); HP Inc. v. MPHJ Tech. Invs., LLC, 817 F.3d 1339, 1347 (Fed. Cir. 2016).
14 Shaw, 817 F.3d at 1299.
15 Shaw, 817 F.3d at 1300.
16 Emphasis added.
17 HP, 817 F.3d at 1347.
18 Id.
19 Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 14-cv-886-jdp, 2017 WL 2116714, at *1, *2 (W.D. Wis. May 15, 2017).
20 Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-05501-SI, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017).
21Id. at *4.
22 Id. at n.4. ("For the avoidance of doubt, Ariosa may still assert grounds based on these pieces of prior art as combined with art not presented during IPR.").
23 Intellectual Ventures I LLC v. Toshiba Corp., 221 F. Supp. 3d 534, 553-554 (D. Del. 2016).
24 Id. at 554.
25 Parallel Networks Licensing, LLC v. Int’l Bus. Machs Corp., No. 13-2072 (KAJ), 2017 WL 1045912 at *11-*12 (D. Del. Feb. 22, 2017).
26 Id. at *11.
27 Id. at *12.
28 157 Cong. Rec. S1375 (daily ed. March 8, 2011) (statement of Sen. Kyl).
29 See Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., No. 15-cv-1067, 2017 WL 3278915 at *9 (N.D. Ill. Aug. 8, 2017); Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 14-cv-886-jdp, 2017 WL 1382556, at *4 (W.D. Wis. April, 18, 2017); Clearlamp, LLC v. LKQ Corp., No. 12-C-2533, 2016 WL 4734389, at *8-*9 (N.D. Ill. Mar. 18, 2016).
30 Clearlamp, 2016 WL
31 Id.
32 Douglas Dynamics, 2017 WL 1382556, at *4.
33 Id.
34 Biscotti Inc. v. Microsoft Corp., No. 2:13-CV-01015-JRG-RSP, 2017 WL 2526231, at *7 (E.D. Tex. May 11, 2017).
35 Id.
36 Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2:15cv21, 2017 U.S. Dist. LEXIS 96909, at *8 (E.D. Va. June 5, 2017).
37 Id. at *8-*9.
38 Id. at *10-*11.
39 Id. at *11.
40 Oil-Dri Corp., 2017 WL 3278915, at *4.
41 Id. at *9.
42 Id. at *8-*9.
43 Id. at *10.
44 Milwaukee Elec. Tool Corp. et al. v. Snap-On Inc., No. 14-CV-1296-JPS, 2017 WL 4220457 at *25-*26 (E.D. Wis. Sept. 22, 2017). See also Precision Fabrics Grp., Inc. v. Tietex Int’l, Ltd., Nos. 1:13-cv-645, 1:14-cv-650, 2016 WL 6839394, at *9 (M.D. N.C. Nov. 21, 2016). The PTAB also has recently found that grounds that a petitioner elects not to raise in its petition for inter partes review may be subject to estoppel in a later IPR under 35 U.S.C. § 315(e)(1). Great W. Cas. Co. v. Intellectual Ventures II LLC, IPR 2016-01534, Paper No. 13, at 13 and 15-16 (Feb. 15, 2017) (denying institution of inter partes review for Section 315(e)(1) estoppel where (1) the reasonableness of Petitioner’s failure to find the reference could not be evaluated because the search parameters used were not presented and (2) the evidence presented as to indexing of the reference-at-issue at the Library of Congress coupled with Petitioner’s familiarity with the web site system provided strong support that the reference is one that Petitioner reasonably could have raised.).
45 Biscotti, 2017 WL 2526231 at *8.
46 Advanced Micro Devices, Inc. v. LG Elecs., Inc., No. 14-cv-01012-SI, 2017 WL 2774339, at *6 (N.D. Cal. June 6, 2017).
47 Milwaukee Elec. Tool, 2017 WL 4220457, at *27.
48 Verinata, 2017 WL 235048, at *4.
49 Id. at *4, n.4.
50 See also Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1316 (Fed. Cir. 2016) ("Inter partes review cannot replace the district court … when claims are challenged in district court as invalid based on the on-sale bar[.]").
51 Clearlamp, 2016 WL 47334389, at *8.
52 Star Envirotech, 2015 WL 4744394, at *4.
53 Office Patent Trial Practice Guide, 77 Fed. Reg. 48760 (Aug. 14, 2012).
54 In re Slominski et al., Reexamination Control No. 95/001,852, Decision Dismissing 37 C. F. R. § 1.181 Petition at 5 (Jan. 23, 2013).
55 Id. at 4.
56 Apple Inc. v. Achates Reference Publ’g, Inc., IPR2013-00080, Paper No. 22, at 20-21 (PTAB June 2, 2014); see also Butamax Advanced Biofuels LLC, v. Gevo Inc., IPR2013-00215, Paper No. 47, at 6 (PTAB Sept. 23, 2014).
57 New Hampshire v. Maine, 532 U.S. 742, 750 (2001).
58 Verinata, 2017 WL 235048, at *7.
59 Depomed, Inc. v. Purdue Pharma L.P., Case No. 13-571 (MLC), 2016 WL 8677317, at *11 (D.N.J. Nov. 4, 2016).
60 Id.
61 In re: Arunachalam, No. 2016-1607, slip op. at 2 (Fed. Cir. Oct. 3, 2017).
62 In re: Arunachalam, slip op. at 8.
63 Id. at 8.
64 Id.
65 In re: Arunachalam, slip op. at 8-9.
66 See Biscotti, 2017 WL 2526231, at *6; Depomed, 2016 WL 8677317, at *11 (noting that "[a]t best, the post-IPR viability of Purdue’s §§ 102 and 103 defenses in light of the Federal Circuit’s decisions in Synopsys and Shaw may impact the Court’s decision going forward regarding
whether matters should be stayed pending IPR.").
67 See Lighting Sci. Grp. Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co., Ltd., No. 16-CV-03886-BLF, 2017 WL 2633131, at *6 (N.D. Cal. June 19, 2017); FastVDO LLC v. AT&T Mobility LLC, No. 3:16-cv-00385-H-WVG, 2017 WL 2323003, at *8 (S.D. Cal. Jan. 23, 2017); Infernal Tech., LLC v. Elec. Arts, Inc., No. 2:15-CV-01523-JRG-RSP, 2016 WL 9000458, at *4, *5 (E.D. Tex. Nov. 21, 2016); e-Watch Inc. v. Avigilon Corp., No. H-13-0347, 2013 WL 6633936, at *3 (S.D. Tex. Dec. 17, 2013).
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