This Report and Recommendation by Magistrate Judge Burke addresses a factual scenario that may apply in several cases in the wake of the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348 (2018).
In November 2012, Plaintiff PDI filed infringement actions in the District of Delaware alleging infringement of one patent-in-suit. Defendants in the infringement actions filed three petitions for inter partes review of certain claims of the patent-in-suit. The PTAB instituted review on certain claims of certain IPR petitions with the net result that claims 14, 19, and 20 of the patent-in-suit were never instituted by the PTAB. As to all other claims of the patent-in-suit, however, the PTAB eventually made a finding of invalidity.
After conclusion of the IPR, the district court actions resumed and PDI asserted only claim 14, 19, and 20. The Defendants asserted counterclaims for declaratory judgment of invalidity, and PDI moved to dismiss based on estoppel pursuant to 35 U.S.C. § 315(e)(2). In 2017, PDI moved to dismiss the counterclaim and Judge Burke denied the motion because there was no Final Written Decision as to claims 14, 19, or 20.