PTAB Dicta Does Not Trigger IPR Estoppel​

The court denied plaintiff's motion to exclude invalidity contentions on the ground that inter partes review estoppel precluded defendant from asserting two individual references after the PTAB instituted review on the combination of those references. "[T]he PTAB explicitly considered in its final written decision whether a subset of the instituted grounds was properly before it, and determined that it was not. . . . Though the PTAB then noted in dicta that '[e]ven if we were to consider [one reference] alone, we find that [reference] does not render the challenged claims obvious,' it is clear the PTAB did not believe any subset of the instituted grounds were properly before it. Given the PTAB’s explicit statements of what was 'properly part of [the IPR]' and what was not, the Court concludes that . . . only the instituted ground (obviousness based on the combination of [the two references]) gives rise to estoppel . . . ."

Oil-Dri Corporation of America v. Nestle Purina Petcare Company, 1-15-cv-01067 (ILND August 2, 2017, Order) (St. Eve, USDJ)