Judge Sue L. Robinson recently issued a summary judgment opinion addressing a host of non-infringement and invalidity arguments. Among the arguments raised was a motion for summary judgment to “prevent [the defendant, Toshiba] from asserting invalidity challenges against the ‘819 patent, because Toshiba was the petitioner in an inter partes review (‘IPR’) in which the Patent Trial and Appeal Board (‘PTAB’) found several claims of the ‘819 patent invalid, including asserted claims 17 and 19.” Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No. 13-453-SLR, Memo. Op. at 25-27 (D. Del. Dec. 19, 2016). Plaintiff, IV, argued that one obviousness combination raised in the IPR was also still at issue in the litigation and that Toshiba was therefore estopped from pursuing it in the litigation. Judge Robinson agreed as to that combination. Id.
For another invalidity theory, however, IV argued that the combination of prior art was “based on publicly available patents and printed publications and could have been raised in the inter partes review of the ‘819 patent.” Judge Robinson found that Toshiba was not estopped form maintaining this theory because “Section 315(e)(2) of Title 35 of the United States Code provides in relevant part that ‘[t]he petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) . . . may not assert in a civil action arising in whole or in part under section 1338 of title 28 . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.’ Although . . . Toshiba certainly couldhave raised these additional obviousness grounds based on public documents at the outset of their IPR petition, the Federal Circuit has construed the above language quite literally[, finding that] . . . because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner ‘did not raise – nor could it have reasonably raised – the [rejected] ground during the IPR.’” Id. (emphasis in original) (citing Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)) (internal citations omitted). Judge Robinson concluded that “[a]lthough extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit’s interpretation.” Id.