Burden on Patent Owner to Show Product Manual Available

Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel.

But what about where the product is the same as a manual that could have been used in the IPR?

In Oil-Dri Corp. of America v. Nestlé Purina Petcare Co., (here) Oil-Dri argued 315(e) estoppel prevented Nestle from raising a certain prior art combinations in litigation based upon earlier IPR failure. The invalidity grounds combined a Japanese patent that was not used during the earlier IPR proceeding. The court noted that the judge previously assigned to the case had held that Nestle was estopped from raising an anticipation defense based on the Japanese patent “because it could have done so during IPR but did not.”

Thereafter, Nestle also presented the Japanese patent in conjunction with another prior art reference – the Kitty Litter Maxx Scoop product – in an obviousness, rather than anticipation, defense. Nestle argued that since the IPR process is limited to considering as prior art only “patents or printed publications” (i.e., not products), that it could not have raised this obviousness contention earlier.

The court held that a petitioner “cannot avoid estoppel simply by pointing to its finished product (rather than the printed materials) during litigation,” when the petitioner had access to printed publications describing the product during the IPR process. However, Oil-Dri failed to present evidence that “a printed publication sufficiently describing the relevant product upon a reasonable search.” The materials in the record did not contain “sufficient detail to constitute a printed publication of the product.” The court therefore found that the previous estoppel ruling, based on anticipation, did not bar the obviousness ground, even when incorporating the same patent.

When facing such a ground, it is the burden of the estoppel proponent (Patent Owner) to prove the product is not superior to the manual, and the manual was used in the IPR or could have been used.

Scott A. McKeown is an author of the Patents Post Grant