As most of our readers likely know, IPR estoppel means that an accused infringer who brought an IPR cannot claim invalidity at trial on a grounds it reasonably could have raised during the IPR. But what constitutes a "grounds" for invalidity has varied across different District Court judges.
Everyone agrees that, as the statute says, the PTAB cannot address system or product prior art under the on-sale bar, but can potentially address publications describing those products. There has long been a split of precedent on whether an accused infringer covered by IPR estoppel can argue invalidity based on a prior art product, where the documentation describing the production could have been asserted in the IPR.
In Ingenico Inc. v. IOENGINE LLC, C.A. No. 18-826-WCB (D. Del.), during discovery, the accused infringer filed IPRs challenging the patents—but at least some claims of the patents survived. Prior to trial, the patentee tried to preclude the accused infringer from asserting system art that corresponded to publications it could have asserted in the IPRs, and Judge Bryson (sitting as a visiting judge by designation) denied the motion.
At trial, the jury found that the products infringed multiple claims, but that all of the claims were invalid as anticipated and obvious over a prior art product. Id., D.I. 500.
Last week, the Federal Circuit affirmed. See Ingenico Inc. v. Ioengine, LLC, C.A. No. 2023-1367, 2025 U.S. App. LEXIS 10956, at *20 (Fed. Cir. May 7, 2025). The unanimous panel set forth a very clear delineation: product or system art is not precluded by IPR estoppel, regardless of whether the accused infringer could have asserted corresponding publications in the IPR:
[W]e hold that IPR estoppel applies only to a petitioner’s assertions in district court that the claimed invention is invalid under 35 U.S.C. §§ 102 or 103 because it was patented or described in a printed publication (or would have been obvious only on the basis of prior art patents or printed publications). . . . IPR estoppel does not preclude a petitioner from asserting that a claimed invention was known or used by others, on sale, or in public use in district court. These are different grounds that could not be raised during an IPR.
Id. at *19. This has been an issue we've been talking about for quite a while on the blog, and it's nice to see the Federal Circuit resolve it with such clarity. Of course, we'll have to see if the full Federal Circuit—and maybe the Supreme Court—say anything different.
(I first saw this decision mentioned over on Patently O. I don't have subscription to their blog, so I can't see most of the post, but it was enough to show this is a notable decision. Thanks, Patently O!)
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
