IPR Estoppel Applies to Prior Art, Not Specific Combinations

The magistrate judge recommended granting plaintiff's motion for summary judgment that IPR estoppel barred defendant from asserting obviousness based on two non-petitioned prior art combinations because defendant reasonably could have raised them during inter partes review. "[Defendant argues] that because it did not disclose the two disputed combinations . . . in its invalidity contentions, and did not do so until after the . . . IPR was over, it is not barred from asserting them today. . . . The legislative history of the statute . . . confirms that Congress intended for estoppel to extend to 'prior art,' rather than to just 'combinations.'. . . Although [defendant] did not assert the specific combinations of prior art references that it now seeks to assert at trial, [defendant] knew that the [underlying] references existed, at least eight months before filing its IPR petition. Yet, [defendant] chose not to raise the specific references before the PTAB. . . . [A]llowing [defendant] to raise arguments that it chose not to raise during IPR, would give it the proverbial 'second bite at the apple,' by allowing it to enjoy the pros of IPR without risking the cons of estoppel."

Network-1 Security Solutions, Inc. v. Alcatel-Lucent USA Inc., et al, 6-11-cv-00492 (TXED September 25, 2017, Order) (Mitchell, MJ)