Estoppel Does Not Apply to Grounds Not Raised in Petition for Inter Partes Review​

The court denied plaintiffs' motion to reconsider an earlier decision that defendant was not estopped from presenting a prior art combination at trial following inter partes review. "[M]y first look at the estoppel issue was incomplete . . . [E]veryone agrees that estoppel applies to grounds for invalidity upon which the Board instituted review in the IPR proceeding, whether or not the Board addresses those grounds in its final decision ('instituted grounds'). I believe that there likewise can be no dispute that estoppel does not apply to invalidity grounds that were raised by a petitioner in an IPR, but rejected by the Board as instituted grounds (i.e., 'noninstituted grounds'). Which leaves us with the situation at bar, where the invalidity ground at issue was never raised in the IPR, but reasonably could have been raised during the IPR ('litigation ground'). To the best of my knowledge, the Federal Circuit has not addressed this specific fact pattern. . . . [Plaintiffs'] reasoning leads to the conclusion that the PTAB is meant to be the invalidity arbiter of first resort and, therefore, a company that seeks an IPR must bring to the PTAB's attention every ground the company has reason to think might be relevant; otherwise, it will be estopped from pursuing that ground in litigation. That outcome appears to be inconsistent with all of the limitations imposed by the PTAB on IPR proceedings . . . and leaves for trial only those references initially rejected by the PTAB. . . . On the whole, since it is not my place to make policy decisions, I am not inclined to change my original decision, with the hopes that an appeal may clarify the issue for future judges in future cases. Therefore, [defendant] is not estopped from presenting [a prior art] combination at trial."

Intellectual Ventures I LLC et al v. Toshiba Corporation et al, 1-13-cv-00453 (DED January 11, 2017, Order) (Robinson, USDJ)