Parallel Networks Licensing LLC v. International Business Machines Corporation, 1-13-cv-02072 (DED February 22, 2017, Order) (Jordan, CJ)
Friday, March 3, 2017
Post-IPR Estoppel Not Limited by Joinder
The court granted plaintiff's motion for summary judgment that its server load balancing patents were not invalid as obvious because defendant was estopped from asserting its prior art combinations following inter partes review. "[Defendant] seeks to invalidate the asserted claims based on prior art combinations of which it was aware before it filed its IPR petitions. . . . In [defendant's] view, the fact that it sought joinder with [another petitioner's] IPR proceedings means that it would have been unreasonable for it to have raised any invalidity arguments that were not presented in [the other petitioner's] IPR. Despite [defendant's] claims to the contrary, there is no 'mirror image' rule for joinder. To the contrary, the cases [defendant] cites for support explicitly contemplate that requests for joinder can involve petitions that assert different grounds of invalidity. . . . Allowing [defendant] to raise arguments here that it elected not to raise during the IPR would give it a second bite at the apple and allow it to reap the benefits of the IPR without the downside of meaningful estoppel."