Adding New Blood into the Estoppel Mix

IPR estoppel under 35 U.S.C. § 315(e)(2) provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  As pointed out previously, a growing number of district courts have construed the phrase the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) to define grounds that a party could have included in its petition, but did not.

Assuming a failed petitioner can locate a piece of prior art that it could not have raised earlier (and make the appropriate showing to avoid estoppel) are combinations with failed art of the IPR precluded?

Last Thursday, the Northern District of California issued an order determining that a failed petitioner (GoPro) is not estopped under 35 U.S.C. § 315(e) from asserting grounds of invalidity based upon a combination of art from unsuccessful IPRs with new art that was not reasonably available during the IPRs.

In 2015, Patent Owner (Contour IP) filed patent infringement claims against GoPro in district court. GoPro then filed two IPR petitions against the asserted patents. The Board instituted the petitions; issued final written decisions that were appealed, consolidated, and remanded; and last summer issued final written decisions on remand. The Board found that GoPro failed to demonstrate that any of the challenged claims are unpatentable.

At issue before the district court was whether GoPro is estopped from asserting grounds of invalidity that combine prior art references used unsuccessfully during the IPRs with new art that was previously unavailable for IPR. The Court decided that GoPro is not estopped from asserting cumulative grounds for invalidity as long as it does so by combining the art unsuccessfully presented to the Board with new art, explaining (here):

GoPro can assert invalidity based on grounds that might be ‘cumulative or redundant’ of grounds raised during IPR as long as it does so by relying on references or combinations of references that were unavailable. See Clearlamp[, LLC v. LKQ Corp., No. 12 C 2533], 2016 WL 4734389, at *8[(N.D. Ill. Mar. 18, 2016)].

This Order gives unsuccessful petitioners a reason to hope that even if they receive an unfavorable result before the PTAB, a district court may still allow for a second bite of the apple when new, previously unavailable art exists, perhaps combining physical system art (not available in IPR) but described in documents submitted to the PTAB.