CBM Estoppel Does Not Apply to Entire Statutory Provision, But to Discrete Prior Art References or Combinations

The court denied plaintiff's motion in limine to exclude evidence of obviousness because CBM estoppel did not apply to an entire statutory basis. "Plaintiff argues that, because [defendant's] CBM challenge was based on 35 U.S.C. § 103, Defendants are estopped from arguing invalidity under that statutory provision. Plaintiff thus asserts that 'ground' in the estoppel provision encompasses the statutory basis for an invalidity challenge to the patent. . . . The estoppel provision applying to CBM review is a fairly new legal rule, and case law does not clearly define its scope. But the Court can gain guidance from the Federal Circuit’s discussion of the term 'grounds' in the context of post-grant review before the PTAB. In [Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016)], the Federal Circuit described several different 'grounds' for obviousness that constituted varied combinations of prior art. . . . [T]he Court agrees with Defendants that the word 'ground' in the CBM estoppel provision refers to a discrete claim of invalidity based upon a prior art or a combination of prior art."

Solutran, Inc. v. US Bancorp et al, 0-13-cv-02637 (MND March 3, 2018, Order) (Nelson, USDJ)