Failure to Raise Owner’s Manual in IPR Does Not Estop Defendant From Asserting Physical Machine as Invalidating Prior Art

The court denied plaintiff's motion to strike defendants' preliminary invalidity contentions as to seven references that were not cited in defendant's petition for inter partes review. "Plaintiff contends that Defendants raised or reasonably could have raised these seven references at the IPR, and therefore Defendants are estopped from raising them in this litigation, pursuant to [35 U.S.C. § 315(e)(2)]. . . . At base, the dispute here centers on one of Defendants’ references: a LeakMaster A240 smoke machine . . . made by Plaintiff and sold on July 1, 1998 in Encinitas, California. Defendants contend they could not have put forward this reference in the IPR because [the reference] is an actual physical machine, not a patent or printed publication. Defendants contend that the [machine] is properly combined with the other six disputed references to create new grounds of invalidity, which could not have been presented in the IPR. Plaintiff argues that – even though the [machine] itself could not have been admitted – Defendants could have instead put forward the [machine's] owner’s manual, which Defendants had in their possession at the time of the IPR. However, 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."

Star EnviroTech, Inc. v. Redline Detection, LLC et al, 8-12-cv-01861 (CACD January 29, 2015, Order) (Bernal, J.)