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Judge Burke Limits Scope of IPR Estoppel to Instituted Claims

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.

PDI later filed a motion for summary judgment that Defendant Ubisoft was estopped based on SAS, which was issued in April 2018. PDI argued that “(1) because Ubisoft SA’s 2014 IPR petition had sought review of claims 14, 19 and 20, and (2) because the PTAB ultimately instituted review in the Ubisoft SA IPR proceeding in 2014 as to certain claims as to that petition (though not claims 14, 19 or 20), then (3) had SAS been the law back in 2014, the PTAB would have been required to have also instituted review of claims 14, 19 and 20. From there, PDI argues that Ubisoft should now be estopped from asserting that claims 14, 19 and 20 are invalid on any ground that Ubisoft SA raised or reasonably could have raised in the Ubisoft SA IPR.” Princeton Digital Image Corp. v. Ubisoft Entertainment SA, et al., C.A. No. 13-335-LPS-CJB, Report and Recommendation at 4 (D. Del. Feb. 1, 2019).

But Judge Burke found that this argument for estoppel failed because “of course, SAS was not the law back in 2014, and claims 14, 19 and 20 were not actually addressed in a Final Written Decision in the Ubisoft SA IPR proceeding. In fact, there was no actual PTAB trial or final determination on those claims in that proceeding. Thus, Ubisoft SA did not then have the ability to argue or challenge any invalidity ground in the Ubisoft SA IPR proceeding as to those claims. The Court cannot proceed here, for purposes of applying Section 315(e)(2)’s estoppel provisions, as if these things did happen, when in fact they did not.” Id. at 5. Further, Judge Burke “disagree[d] with PDI’s argument that ‘the IPR statute does not state that a claim must be addressed in the final written decision’ for estoppel to apply as to invalidity arguments regarding that claim. Section 315(e)(2) requires that a patent claim (i.e., claims 14, 19 and 20) has to actually have been a part of the IPR proceeding for estoppel to apply, as such claims are the only ones as to which it can be said that the petitioner ‘raised or reasonably could have raised’ arguments regarding invalidity ‘during that inter partes review.'” Id.

Princeton Digital Image Corp. v. Ubisoft Entertainment SA, et al., C.A. No. 13-335-LPS-CJB, Report and Recommendation (D. Del. Feb. 1, 2019).

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