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You Can’t Use That Now: Judge Matsumoto Estops Defendant from Using Prior Art It Could Have Used During IPR

On January 30, 2019, District Judge Matsumoto (E.D.N.Y.) ruled that Defendant Presidio Components, Inc. (“Presidio”) was estopped from asserting invalidity grounds that were not included in its petition for inter partes review against U.S. Patent No. 6,144,547 (“the ’547 patent).

Plaintiffs American Technical Ceramics Corp. and AVX Corporation (collectively, “Plaintiffs”) filed a complaint for patent infringement against Presidio, alleging infringement by Presidio of the ’547 patent, U.S. Patent Nos. 6,337,791 (“the ’791 patent”), and 6,992,879 (“the ’879 patent”) (collectively, “the Patents-in-Suit”).  Presidio filed petitions for inter partes review (“IPR”) against each of the Patents-in-Suit. The Patent Trial and Appeals Board (“the Board”) found the ’879 patent and claim 1 of the ’791 patent to be unpatentable, but confirmed the patentability of all other claims.  After completion of the IPRs, Presidio sought to amend its invalidity contentions regarding the ’547 patent to assert additional grounds of invalidity. Plaintiffs objected, stating that Presidio was estopped under 35 U.S.C. § 315(e)(2) from raising invalidity arguments it “raised or reasonably could have raised” during the IPR.  Presidio argued that “because it did not petition the [Board] on the invalidity grounds it now seeks to amend to its invalidity contentions, it necessarily could not have raised the grounds during the IPR and is thus not estopped.”

Citing the “policy goals driving the creation of the IPR process”, the Court applied “a broader interpretation of the estoppel provision” and held that Presidio was estopped from amending its invalidity contentions to include non-petitioned grounds of invalidity. The Court noted that a narrow reading of the estoppel provision “invites parties to take a second bite at the apple and would hardly promote efficiency or reduce the burden on federal courts.”

Finding that Presidio “reasonably could have raised” the additional invalidity grounds in the IPR, the Court stated that to allow Presidio to raise those grounds now would “render the estoppel provisions meaningless.” Indeed, “[w]hen a party chooses to seek IPR, but only on certain grounds, that choice comes with consequences, notably the risk of estoppel under § 315(e)(2).”

The case is Am. Tech. Ceramics Corp. v. Presidio Components, Inc., No. 14-cv-6544 (KAM) (GRB) (E.D.N.Y. Jan. 30, 2019)