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Under the estoppel provisions of 35 U.S.C. § 315(e), if an
IPR results in a final written decision, the petitioner is barred
from raising invalidity arguments in court or the ITC based on any
grounds the petitioner "raised or reasonably could have
raised" in the IPR, which may in practice mean any grounds based on patents or printed
publications. Thus, petitioners involved in parallel
litigation sometimes assert backup invalidity defenses based on
prior art products. Two recent cases demonstrate that while such
defenses can avoid estoppel, courts may reject perceived attempts
to dodge estoppel by simply repackaging a publication-based ground
as a product-based ground.
In Polaris Industries v. Arctic
Cat (D. Minn.), Polaris moved for summary judgment that
IPR estoppel barred Arctic Cat from pursuing seven invalidity
grounds: three involving physical vehicles, and four involving
publications—including the vehicle manuals—and patents.
The court estopped the latter grounds but not the former. It
rejected Polaris's argument that estoppel should apply to the
vehicle-based grounds because the vehicle manuals disclosed
everything relevant, noting that no previous case had applied
estoppel to products.
The next day, however, in CalTech. v. Broadcom
(C.D. Cal.), the court suggested that estoppel could apply
to products in certain circumstances. The plaintiffs sought to
apply IPR estoppel to invalidity defenses under the "known or
used" prong of pre-AIA Section 102(a) that relied on public
presentations as evidence. The court held that there must be
"some substantive difference" (emphasis in
original) between the "known or used" evidence and any
related patents/publications that would be estopped. In so ruling,
the court relied on prior cases suggesting that estoppel might
prohibit relying too heavily on published product manuals as
evidence of what a product disclosed. It ruled that defendants
could not use publicly presented papers or slides as
"primary" evidence for what was "known or
used," but could use them to corroborate "other
evidentiary sources." The court ultimately estopped the
defenses based on the lack of timely produced evidence meeting the
"some substantive difference" test.
Takeaways
Petitioners asserting backup product-based defenses should look
for admissible evidence of a product's structure/operation that
provides some relevant information beyond the published
documentation. Depending on the challenged claim and the products,
such evidence might include screenshots or other demonstrations of
the product, laboratory testing reports, or non-public technical
documentation. Published manuals may be safe to use as
corroboration, but not as primary evidence.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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