Judge Sue L. Robinson revisited the scope of the statutory estoppel applicable in view of instituted IPR proceedings. Intellectual Ventures I LLC v. Toshiba Corporation, No. 13-453-SLR (D. Del. Jan. 11, 2017). Judge Robinson previously held that Toshiba was not estopped from presenting a certain obviousness combination at trial because an IPR was not instituted on that ground. Judge Robinson revisited this decision following supplemental papers submitted in conjunction with the pretrial conference and concluded that, while the Court’s “first look” at the issue was incomplete, the ultimate decision should remain unchanged. Id. at 1, 3. Judge Robinson described the issue at hand as a situation in which “the invalidity ground at issue (the Fuse combination) was never raised in the IPR, but reasonably could have been raised during the IPR[.]” Id. at 2. Absent specific guidance from the Federal Circuit as to this specific fact pattern, Judge Robinson described the options facing the Court:
[Plaintiff]’s reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter of first resort and, therefore, a company that seeks an IPR must bring to the PTAB’s attention every ground the company has reason to think might be relevant; otherwise, it will be estopped from pursuing that ground in litigation. That outcome appears to be inconsistent with all of the limitations imposed by the PTAB on IPR proceedings (e.g., page limits for petitions, 14 point type, and portrait-view claim charts) and leaves for trial only those references initially rejected by the PTAB. On the flip side of the coin is [Defendant]’s reasoning, which leads to the conclusion that a company can play games between the PTAB (IPR) and the courts (litigation), asserting some references in connection with the IPR but reserving some for litigation.
Id. at 3. Ultimately, Judge Robinson held that since it is not the Court’s “place to make policy decisions, I am not inclined to change my original decision, with the hopes that any appeal may clarify the issue for future judges in future cases.” Id.