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Scope of Estoppel Post-IPR Proceedings Becoming Clearer
documents, many of the documents cited in support of the invalidity defenses were con dential. Id. at 17; see also Star Envirotech v. Redline Detection, Case No. 12-01861, at 5 (C.D. Cal. Jan. 29, 2015) (refusing to strike invalidity defense based on a prior sale despite the fact that the challenger had access to a printed user manual for the on- sale product when it led an IPR because “the physical machine itself discloses features claimed in the [patent] that are not included in the instruction manual, and it is therefore a superior and separate reference”).
Next, §315(e)(1) states that it applies when “inter partes review of a claim in a patent ... results in a nal written decision.” Interpreting this language, courts have determined that estoppel applies on a claim-by-claim basis. An IPR petitioner is not estopped from chal- lenging the validity of any claims that were not at issue in IPR. See Synopsys, 814 F.3d at 1313-14.
Last, courts have also found that §315(e)(1) does not apply to an invalidity ground that was included in an IPR petition but not insti- tuted. See Shaw Indus. Group v. Automated Creel Sys., 817 F.3d 1293, 1300 (Fed. Cir. 2016). Estoppel does not apply because these non- instituted grounds do “not become part of an IPR” and thus “were not raised and, as review was denied, could not be raised in the IPR.” HP v. MPHJ Tech. Invs., 817 F.3d 1399, 1347 (Fed. Cir. 2016).
‘Verinata’
The Verinata decision addresses many of the same factual circumstances discussed above and arrives at the same conclusions regarding the applicability of §315(e)(1). But, one additional factual scenario was also addressed: the Verinata court was confronted with an IPR invalidity ground that was not instituted, but was entirely subsumed within a ground that was instituted and proceeded to nal written decision. Departing from the trend to interpret §315(e)(1) narrowly, Veri- nata found that §315(e)(1) can apply to this type of non-instituted ground.
In this case, plaintiff Verinata Health assert- ed two patents—U.S. Patent Nos. 8,318,430 (the ’430 patent) and 7,955,794 (the ’794)— against defendant Ariosa Diagnostics. Ariosa then led a series of petitions for inter partes review. The district court granted a stay pend- ing the resolution of the IPRs.
Ariosa’s petition relating to the ’430 pat- ent asserted three grounds: (1) obviousness over Dhallan and Binladen, (2) obviousness over Quake and Criag, and (3) obviousness over references Dhallan, Binladen, and Shoemaker. The PTAB instituted IPR only on the third ground. The ’794 petition also included three grounds (1) anticipation by Fan, (2) obviousness over Fan and Lizardi, and (3) obviousness over Straus, Rothberg, and Walt. The PTAB instituted IPR only on the rst ground. Ariosa’s two IPRs then proceeded to nal written decision. In connection with the ’430 patent, the PTAB rejected Ariosa’s arguments because it found the evidence regarding motivation to combine lacking. In connection with the ’794 patent, the PTAB found that Ariosa had failed to establish that Fan was prior art.
After the nal written decision, the dis-
BY A. ANTONY PFEFFER AND K. PATRICK HERMAN
U nder 35 U.S.C. §315(e)(1), a petitioner who files a petition for inter partes review (IPR) that proceeds to a nal
written decision “may not assert ... in a civil action ... that the claim [at issue in the IPR] is invalid on any ground that the petitioner raised or reasonably could have raised during that” IPR. This estoppel provision has been the subject of a number of Federal Circuit and district court decisions. Most of these decisions have interpreted §315(e)(1) nar- rowly and have recognized many circum- stances where IPR arguments do not give rise to estoppel. One recent decision out of the Northern District of California—Verinata Health v. Ariosa Diagnostics, Case No. 12-cv- 05501 (N.D. Cal., Jan. 19, 2017)—represents an exception to this general trend. Verinata held that §315(e)(1) can, in certain circumstances,
A. ANTONY PFEFFER is a partner and K. PATRICK HER- MAN is of counsel at Orrick, Herrington & Sutcliffe in New York.
apply to invalidity grounds included in an IPR petition that the Patent Trial and Appeal Board (PTAB) determined to be redundant and did not institute and carry through to a nal written decision.
To help put Verinata in context, a summary of the state of the law regarding IPR estoppel prior to the decision follows.
Scope of IPR Estoppel Prior to ‘Verinata’
There are several types of invalidity argu- ments that cannot be raised in an IPR at all. In particular, an IPR can only address “a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publication.” 35 U.S.C. §311. Thus, it is not possible for a petitioner to raise §101, §112, or invalidity arguments based on prior use, sale, knowledge, or invention. See Synopsys v. Mentor Graphics, 814 F.3d 1309, 1316 (Fed. Cir. 2016). Since §315(e)(1) applies only to “ground[s] that the petitioner raised or reasonably could have raised,” it follows that the issuance of an IPR nal written decision cannot prevent a defendant from making these types of argu- ments in district court. See id. Indeed, some
courts have found that a petitioner is not estopped from making on-sale bar or prior invention invalidity arguments even when there is some documentary overlap between those arguments and invalidity grounds that were part of an IPR. For instance, in Depomed v. Purdue Pharma, Case No. 13-571 (D.N.J. Nov. 4, 2016), the plaintiff attempted to argue that §315(e)(1) applied to defendant’s on- sale bar and 102(g) defenses. See id. at 12.
With respect to the on-sale bar, the plain- tiff argued that the defendant had access to “suf cient documentation” regarding the on-sale product that would have allowed this invalidity defense to be included in the defendant’s earlier IPR. Id. at 13. With respect to 102(g), the patentee argued that the defense was premised on two publicly available patent applications that also could have served as the basis for an IPR ground. Id. The court disagreed that the on-sale and 102(g) defenses were barred. According to the court, “the use of patents or printed publications” to support such arguments does not “transform these defenses” into “a statutory ground for relief in an IPR.” Id. at 16. Further, the court also noted that while the defendant did point to some published
DIEGO M. RADZINSCHI/ALM