The law is littered with reasonable people, and none of them do us much good. We have the reasonable person exercising ordinary caution (negligence). There's the reasonable person who attaches importance to the existence or nonexistence of a fact in determining his choice of action (materiality). Relevant to this blog post, and pictured below, we have the "skilled researcher conducting a diligent search" (estoppel).
For those who haven't encountered this one in a while, this hypothetical skilled researcher is the measuring stick we use to determine whether a given reference could have reasonable been raised in an IPR and thus, whether an accused infringer is estopped from raising it in the district court.
As measuring sticks go, it's reminiscent of an Ikea tool (although I can't for the life of me think of a better one). Judge Hall, however, toyed with a clearer rule today in Innovative Memory Systems Inc. v. Micron Technology Inc., No. 14-1480-RGA (D. Del. Sept. 29, 2022), that I can see getting quite a few cites in the coming years.
The dispute there was pretty standard. The prior art in question was an everyday U.S. Patent, that the defendant just failed to find in its prior art search before bringing its IPR. There was a lot of back and forth in the briefing about how many searches they performed and what search terms might have uncovered the patent. Judge Hall, however, began her discussion with this chestnut:
For my part, I’m not sure that § 315(e) leaves any room for a patent challenger to argue that it could not reasonably have raised an indexed, searchable U.S. patent in its prior IPR proceedings. Indeed, Micron does not cite any case where such a failure was ultimately excused
Id. at 7.
Unfortunately (for bloggers), Judge Hall went on to note that she did not need to reach such a bright line rule because the plaintiff had shown reasonable search terms that appeared in the patent. Nevertheless, I would not be at all surprised to see this line cited in any case where this issue is raised for the foreseeable future.
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