Judicial Estoppel Does Not Bar Assertion of Invalidity Defenses Raised but not Instituted in IPR​

The court denied plaintiff's motion to strike defendant's amended invalidity contentions due to judicial estoppel because of statements defendant made in obtaining a stay pending inter partes review. "While the Court appreciates [plaintiff's] frustration at having to litigate certain issues that were presented to the PTAB, particularly defenses on which the PTAB declined to institute review based on [defendant's] failure to establish a likelihood of success or because the asserted prior art combinations were redundant in light of other reviewed combinations, the Court cannot ignore the fact that the Federal Circuit has determined that it is appropriate to do so. . . . While the Court and [plaintiff] may have preferred a greater simplification of issues, the IPR proceedings did reduce the number of prior art references and defenses that [defendant] can now raise. . . . At best, the post IPR viability of [defendant's] §§ 102 and 103 defenses in light of [recent] Federal Circuit’s decisions . . . may impact the Court’s decisions going forward regarding whether matters should be stayed pending IPR. It does not, however, convince the Court that [defendant] should be judicially estopped from raising any defenses in this litigation."

Depomed, Inc. v. Purdue Pharma LP et al, 3-13-cv-00571 (NJD November 4, 2016, Order) (Bongiovanni, MJ)