IPR Estoppel Applies to Unpatentability Grounds Denied Institution as Redundant​

The court granted in part plaintiffs' motion to strike portions of defendants' invalidity contentions following inter partes review. "As to plaintiffs’ assertion that defendants are estopped from raising obviousness over the combination of [two prior art references], the Court disagrees. As [Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016)] dictates, the PTAB did not institute on this ground and, therefore, defendants are not estopped from raising the same invalidity argument in this litigation. [Defendant] is estopped, however, from raising the obviousness combination of [two different prior art references]. Because the PTAB did not institute on this exact ground, instead finding it redundant in light of the instituted grounds of [other references], the question is whether defendants 'raised or reasonably could have raised' obviousness over [two references] during the IPR proceedings. The Court finds that defendants raised, or could have raised, these grounds in the IPR proceedings, as the combination of [the two references at issue] is simply a subset of the instituted grounds."

Verinata Health, Inc., et al v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 19, 2017, Order) (Illston, USDJ)