IPR Estoppel Does Not Apply to Obviousness Grounds Based on Public Documents That Could Have Been Raised at the Outset of the IPR​

The court granted plaintiff's motion for summary judgment "to prevent [defendant] from asserting invalidity challenges" due to IPR estoppel as to references raised during a prior IPR, but denied the motion with respect to references that could have been raised in the IPR, but were not. "Although [plaintiff's] argument in this regard is perfectly plausible, in the sense that [defendant] certainly could have 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. More specifically, the Court determined in [Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)] 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.' Although 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 in Shaw. [Defendant] may not raise obviousness based on [3 references raised during IPR] against the relevant claims of the [patent] in the case at bar. However, [defendant] may present the additional invalidity grounds at trial."

Intellectual Ventures I LLC et al v. Toshiba Corporation et al, 1-13-cv-00453 (DED December 19, 2016, Order) (Robinson, USDJ)