IPR Estoppel Does Not Apply to Invalidity Grounds Omitted From Petition

The court denied plaintiff's motion for summary judgment that its lighting patents were not invalid for lack of novelty or obviousness due to IPR estoppel. "⁠[Plaintiff] contends that, any invalidity contention that [defendant] did disclose in its preliminary and supplemental invalidity disclosures must fail because [defendant] is estopped from asserting such contention in federal court under 35 U.S.C. § 315(e)(2), since [defendant] 'raised or reasonably could have raised' any such contentions in its IPR petition. . . . Some courts . . . reason[] that [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)] only requires excluding from the scope of Section 315(e)(2) those invalidity grounds for which the PTAB did not institute review, but not invalidity grounds that the petitioner failed to raise in its petition because the narrower estoppel suggested by Shaw would encourage petitioners to hold back 'a second-string invalidity case in reserve in case the IPR does not go the defendant’s way.'. . . . There is much appeal in a broader reading of the estoppel provision. . . . [But that] reading of the estoppel provision is foreclosed by Shaw. The Federal Circuit in Shaw held that the phrase 'during inter partes review' applies only to the period of time after the PTAB has instituted review, and notwithstanding [plaintiff's] claims to the contrary, that holding was not limited to Section 315(e)(1) nor was it mere dicta."

Koninklijke Philips NV et al v. Wangs Alliance Corporation d/b/a WAC Lighting Co., 1-14-cv-12298 (MAD January 2, 2018, Order) (Casper, USDJ)