Verinata Health, Inc., et al v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 19, 2017, Order) (Illston, USDJ)
Monday, January 23, 2017
Arguments Supporting Motion to Stay Pending IPR Do Not Judicially Estop Invalidity Arguments
The court denied plaintiffs' motion to strike portions of defendants' invalidity contentions based on judicial estoppel following inter partes review. "Plaintiffs contend that because [the petitioner defendant] argued numerous times before this Court that pending IPR petitions would simplify this litigation through statutory estoppel or invalidation, that [defendant] derived an unfair advantage and should be estopped from raising nearly all of its invalidity arguments. . . . Because [defendant] argued to the Court that the IPR proceedings stood to simplify this litigation through the application of statutory estoppel, plaintiffs seek to prevent [defendant] from now arguing that a narrower estoppel applies post-IPR. The Court finds plaintiffs’ judicial estoppel argument unpersuasive. The Court sees nothing 'clearly inconsistent' about [defendant's] arguments in support of staying this case and its desire to maintain its invalidity defenses moving forward. Even if [defendant] did state that such broad estoppel would apply, the Federal Circuit has only recently begun to clarify the scope of IPR estoppel, such that any inconsistency between [defendant's] previous and current positions is excusable."