Judge Fallon issued an order yesterday recognizing the split in the district court on how the judges handle IPR estoppel—specifically the question of whether IPR estoppel may apply to prior art products that are cumulative of patents or publications that could have been raised in the IPR:
ORAL ORDER . . . IT IS ORDERED that Plaintiff's motion to strike Defendant's amended invalidity contentions based on IPR estoppel is DENIED without prejudice. The parties dispute whether IPR estoppel should apply to Defendant's invalidity theories based on prior art systems, products, and/or knowledge. Under 35 U.S.C. § 315(e)(2), Defendant is barred from asserting an invalidity defense based on "any ground that [Defendant] raised or reasonably could have raised during that inter partes review." Section 311(b) provides that the validity of patent claims can be challenged in an IPR "only on the basis of prior art consisting of patents or printed publications," to the exclusion of physical products. 35 U.S.C. § 311(b). There is a split of authority in this District as to whether IPR estoppel may extend to physical products raised in litigation when the underlying patents or printed publications relating to the physical products could have been raised in the IPR. Compare Chemours Co. FC, LLC v. Daikin Indus., Ltd., C.A. No. 17-1612-MN, 2022 WL 2643517, at *1 (D. Del. July 8, 2022) (declining to apply IPR estoppel to prior art products, regardless of whether those products were "cumulative" of prior art patents or printed publications), with Wasica Fin. GmbH v. Schrader Intl, Inc., 432 F. Supp. 3d 448, 453 (D. Del. 2020) (concluding that physical products fall within the scope of IPR estoppel when the underlying patents or printed publications relating to the physical product could have been raised in the IPR).
Judge Fallon cited Judge Noreika's Chemours opinion—which we've discussed—and compared it to Judge Stark's prior Wasica decision.
For now, Judge Fallon declined to choose a side. Instead, she held that the plaintiff had not met its burden under Wasica, due in part to the constrained briefing that is permitted in a discovery dispute:
The party asserting IPR estoppel bears the burden to show that estoppel applies to the patent claims. See Wi-LAN Inc. v. LG Elecs., Inc., 421 F. Supp. 3d 911, 925 (S.D. Cal. 2019). To meet this burden under the line of cases Plaintiff asks this Court to follow, Plaintiff must show that the physical products, systems, and/or knowledge asserted in the litigation are entirely cumulative of the patents or prior art publications raised in the IPR proceeding. See Wasica, 432 F. Supp. 3d at 453. Due to the Court's truncated letter briefing procedures for discovery disputes, Plaintiff has not met its burden here.
She also pointed out that this issue may go away anyway, so it is more efficient to address it later—and she invited a request for an extended page limit if it doesn't:
Moreover, Plaintiff's motion is premature. Under the scheduling order, Defendant must reduce its prior art-based invalidity case to five base prior art references by May 15, 2023. (D.I. 98 at ¶ 3(g)(iii)) There is time for the parties to meet and confer in a further effort to resolve the issue through the case narrowing process and, if not, Plaintiff may renew its motion after case narrowing has occurred with a request for an extension of page limitations, if necessary.
Given Judge Stark's current position, I wonder if we may hear from him again on this issue at some point.
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