Ingenico Inc. v. IOENGINE, LLC, No. 23-1367 (Fed. Cir. May 7, 2025)
The Federal Circuit's recent decision in Ingenico Inc. v. IOENGINE, LLC resolved a significant district court split by holding that inter partes review (IPR) estoppel under 35 U.S.C. § 315(e)(2) does not bar patent challengers from relying on the same patents or printed publications that were raised or reasonably could have been raised during IPR, so long as such prior art is used to challenge validity on statutory grounds not available during IPR.
The Ingenico decision formalizes a critical doctrinal distinction between a "ground" (a statutory theory of invalidity) and "prior art" (such as patents or printed publications). By narrowly interpreting "ground," the Federal Circuit limited the reach of IPR estoppel in district court and opened the door for defendants to use the same prior art raised in an IPR to challenge patent validity on different legal theories.
Key Holding
IPR estoppel under § 315(e)(2) only bars petitioners from raising in district court any legal ground for invalidity that was or reasonably could have been raised in the IPR—i.e., anticipation or obviousness based on patents or printed publications, as limited by 35 U.S.C. § 311(b). The operative word, according to the Federal Circuit, is the word "ground."
"IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use." — Slip op. at 14
As such, petitioners who rely on patents or printed publications, even if raised as evidence in the IPR, may continue to rely on the same patents or printed publications so long as they are used to support a "ground" not available in IPR, for example, the grounds of "public use, on sale, or otherwise available to the public" under 35 U.S.C. § 102(a)(1).
Background: Printed Publications, System Art, and Tactical Repurposing
The procedural background of Ingenico is typical of many patent disputes. IOENGINE (the patent holder) filed suit against Ingenico in 2018, accusing Ingenico of infringing multiple patents directed to a portable device, such as a USB thumb drive, which includes a processor that causes communications to be sent to a network server in response to user interaction with an interface on a terminal. Before trial, Ingenico filed IPR petitions challenging IOENGINE's asserted patents, resulting in final written decisions that held most of the challenged claims unpatentable.
Following the IPRs, the parties resumed district court litigation, which included summary judgment and trial. IOENGINE sought to preclude Ingenico from relying on certain prior art based on IPR estoppel under section 315(e)(2). The district court ruled that Ingenico "will be estopped from relying on those documents [to prove invalidity] except to the extent ... that they form part of a substantively different combination of references that could not reasonably have been raised in the IPRs." The specific documents at issue related to a prior art USB device known as the DiskOnKey (DiskOnKey Device). According to IOENGINE, Ingenico "reasonably could have been expected to raise it during the IPR proceedings."
The district court allowed Ingenico to introduce and rely on the DiskOnKey Device at trial. The jury returned a verdict finding that the claims-at-issue were infringed but invalid as anticipated and obvious. IOENGINE subsequently moved for judgment as a matter of law and for a new trial, arguing that Ingenico should have been estopped from introducing the DiskOnKey Device due to the IPR.
The Federal Circuit affirmed the district court's denial of IOENGINE's motion for judgment as a matter of law and motion for a new trial.
So, how will Ingenico affect patent litigation?
- Same References Can Be Used to Prove Different Grounds.
Defendants can reuse patents or printed publications, even if raised during IPR, so long as they are introduced in court to support grounds unavailable in the IPR (e.g., public use, sale, known-by-others). What's more, challenges that prior art could or should have been raised at IPR may be unavailing if the prior art's only evidentiary value would be to support patentability challenges, which are unavailable "grounds" of IPR. For example, IOENGINE argued that the DiskOnKey Device (device prior art) and the Readme file (literature describing the DiskOnKey Device) could have been raised during the IPR, particularly the Readme file which arguably constitutes a printed publication. But the Federal Circuit reasoned that: (1) the DiskOnKey Device is device prior art which is incapable of serving as evidence at IPR, and (2) the Readme file was only introduced at trial to support the contention that the DiskOnKey Device was known, used by others, on sale, or in public use...nothing else. As such, prior art references, whether raised at IPR or not, are not fodder for estoppel if they are raised in support of "unavailable IPR grounds." The Federal Circuit's delineation between "grounds" and "prior art" is pivotal.
"[A] ground is not the prior art asserted during an IPR... Congress could have precluded petitioners from asserting in district court that the claim is invalid on any prior art... but Congress chose not to." — Slip op. at 14
- Strategic Recasting of Prior Art Grounds.
Ingenico has narrowed the parameters of estoppel, which has, in turn, broadened the universe of ways in which litigants may present prior art used in an IPR. Savvy defense counsel will now undoubtedly raise and preserve patentability challenges under Sections 101, 112 (and other "unavailable IPR grounds") immediately at the district court level. Whether or not district courts will permit defendants to amend their contentions to cover such grounds (perhaps if not raised at the outset of the case) following IPR is a separate question and will likely be case-dependent. But going forward, prior art may effectively be "repackaged" or "reused" despite IPR estoppel, so long as the prior art is used to support grounds that could not be raised during the IPR.
TAFT Takeaways: early disclosures and fulsome contentions are now of even greater importance.
Ingenico will reshape invalidity defense strategies and place immense emphasis on early and fulsome invalidity contentions/disclosures.
Litigants should now anticipate dual-track proceedings: district court litigation and IPR. But more importantly, patent owners must be prepared to insist on early and fulsome invalidity contentions/disclosures prior to IPR. Without knowing all the "grounds" on which validity may be challenged and without fulsome disclosures of prior art, patent owners will be significantly disadvantaged in preparing for all possible—and now available—avenues of packaging and using prior art.
Key Citation:
Ingenico Inc. v. IOENGINE, LLC, No. 23-1367, slip op. at 11–16 (Fed. Cir. May 7, 2025)
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