New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR.

Before reaching the issue of the application of IPR references under a “known or used” theory, the Court explained its view of estoppel post-SAS.

First, it noted that the defendants were aware of all the prior art raised in the district court case when filing their IPR petitions – and under § 315(e)(2), the petitioner in an IPR proceeding resulting in a final written decision may not assert that the claim is invalid “on any ground that the petitioner raised or reasonably could have raised” in the IPR. The Court observed that the Federal Circuit in Shaw, addressing non-instituted grounds in light of this section, “reasoned that the non-instituted ground was not a ground raised or that reasonably could have been raised ‘during that inter partes review’ because ‘[t]he IPR does not begin until it is instituted.’” However, here, grounds that were not originally instituted became available for trial post-SAS, and petitioner did not pursue them.

In addressing voluntarily non-instituted grounds (post-SAS) specifically, the Court found that it would be fairest for a petitioner to be estopped from raising grounds that it reasonably could have included in its IPR petition. That is, unlike the situation in which a petitioner could not raise grounds after the institution through no fault of its own, “in the context of non-petitioned grounds, the issue goes back to the choices made by the petitioner itself.” Furthermore, in light of SAS – interpreted by the Federal Circuit to require the PTAB to institute IPR on all the petitioned claims, or not at all – the Court found that “the factual circumstances encountered by Shaw (partial denial of institution of IPR as to a particular ground, with that denial unappealable) are unlikely to arise again,” so only the petitioner decides what grounds could be raised “during IPR.”

With those threshold estoppel considerations settled, the Court moved onto the “known or used” presentation of the same art. Here, the defendants argued that while some of the prior art references at issue were included in their IPR petitions as printed publications, they were currently bringing these references separately under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a). Reasoning that since the PTAB will only consider patents or printed publications as grounds for invalidity, this presentation was effectively unavailable, and therefore, permitted the defendants a second bite at the apple.

However, the Court found that the defendants insistence that their references were simultaneously printed publications was a strategy that adapted, “depending on what position [was] ultimately more successful.” Furthermore, their argument in support of the new alternative interpretation (as evidence of what was “known or used”) – i.e., that the document was not publicly accessible – was necessarily inconsistent.

Finally, defendants analogized to cases in which submission of a product manual as a printed publication prior art before the PTAB did not estop submission of the prior art product in a district court case. The Court found this analogy inapposite, however, observing that “the core element that forms the basis of Defendants’ prior art includes the same document(s).” That is, the prior art Defendants attempted to introduce at trial provided essentially the same information and context as when it was introduced before the PTAB. As the court stated, “although Defendants assert that there will be a ‘meaningful difference’ in the invalidity presentation under the ‘known or used’ prong, Defendants have not presented sufficient evidence to back that assertion.

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