PTAB Joinder Does Not Limit Scope of IPR Estoppel

Following two inter partes review proceedings, the court granted plaintiff's motion for summary judgment that IPR estoppel under 35 U.S.C. 315(e)(2) barred defendants from asserting invalidity of previously instituted claims based on prior art that was known by defendants when they joined a third-party's IPR, but which defendant's failed to assert in that IPR. "When requesting joinder, Defendants did not raise any of the additional prior art patents and publications already identified in their invalidity contentions in this case. Defendants respond that because the 'PTAB routinely denies joinder if a second-filed petition might introduce new arguments or grounds into a pending IPR,' the only grounds that Defendants 'reasonably could have raised in the [third-party] IPR were the same grounds on which the PTAB already instituted the [third-party] IPR.' Contrary to Defendants’ arguments, there is no 'mirror image' rule for joinder. The PTAB has noted that requests for joinder can involve petitions that assert different grounds of invalidity. . . . Allowing Defendants to raise arguments here that they elected not to raise during the [third party] IPR would give them 'a second bite at the apple and allow [defendants] to reap the benefits of the IPR without the downside of meaningful estoppel.'. . . Accordingly, Defendants are statutorily estopped from arguing that the instituted claims of the [patent] are anticipated or obvious in light of prior art patents and publications discussed in their invalidity contentions."

ZitoVault LLC v. International Business Machines Corporation et al, 3-16-cv-00962 (TXND April 4, 2018, Order) (Lynn, USDJ)