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Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 2 of 16 PageID 11607. Appeal Board PTAB of the U S Patent and Trademark Office. PTO see ECF No 74 Joint Motion to Stay at 2 the, remaining claims of infringement before this court concern all. but claim 1 of the 791 Patent and the 547 Patent in its. entirety the 879 Patent having been found unpatentable by the. PTAB See ECF No 126 Summary Judgment Order at 81, dismissing plaintiffs claims for infringement of the 879. Patent and of claim 1 of the 791 Patent after IPR ECF No 79. First Claim Construction Order dated November 7 2016 ECF No. 136 Second Claim Construction Order dated November 2 2018. After the court issued its second claim construction. decision dated November 2 2018 and construing the term. terminations the parties submitted a joint status letter. dated November 16 2018 in which plaintiffs requested a trial. date and defendant requested to supplement its invalidity. contentions as to the 547 Patent exchanged pursuant to this. District s Local Patent Rules ECF No 137 Joint Status. Letter dated November 16 2018 JSL at 1 3 Additionally. Presidio requested leave to renew certain portions of its. summary judgment motion which the court previously denied. without prejudice pending further claim construction of the. term terminations Id at 3 ECF No 126 Summary Judgment. Order at 53 Having construed terminations see ECF No. 136 Claim Construction Order at 26 the court found that a. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 3 of 16 PageID 11608. genuine dispute of material issues of fact prevented it from. ruling as a matter of law on Presidio s renewed motion and thus. denied the motion See Amended Minute Entry dated December 20. Pending before the court now is Presidio s request to. supplement its invalidity contentions regarding the 547 Patent. Plaintiffs object stating that Presidio is estopped from. raising in this proceeding any invalidity ground that it raised. or reasonably could have raised during the IPR proceeding. challenging the 547 Patent citing 35 U S C 315 e 2 JSL. at 2 Presidio responds by relying on Shaw Industries Group. Inc v Automated Creel Systems Inc 817 F 3d 1293 Fed Cir. 2016 to argue that because it did not petition the PTAB on the. invalidity grounds it now seeks to amend to its invalidity. contentions it necessarily could not have raised the grounds. during the IPR and is thus not estopped JSL at 4 5 6. Plaintiffs argue in the alternative that even if Presidio is. not estopped it has failed to show good cause to reopen. discovery for the purposes of serving supplemental invalidity. contentions and a supplemental expert invalidity report. For the reasons discussed below the court finds that. defendant is estopped from raising invalidity grounds that it. did not include in its IPR petition to the PTO challenging the. 547 Patent and thus it may not supplement its invalidity. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 4 of 16 PageID 11609. contentions or serve a new expert invalidity report Given that. Presidio could have but did not explain why it did not include. the grounds it now seeks to supplement to the invalidity. contentions when it sought IPR the court need not address. whether Presidio has shown good cause to reopen discovery. Moreover the court notes that Presidio s submissions to date. have lacked specifics concerning what new grounds it intended to. raise and why those grounds were not available to it when it. petitioned for IPR, Though the court previously indicated it would issue a. pretrial scheduling order with a trial date the court currently. has a conflicting criminal trial scheduled for the parties. requested June 24 2019 trial date See ECF No 141 Joint. Letter dated January 24 2019 Should that criminal trial be. rescheduled the court will inform the parties and they should. be prepared to proceed on June 24 2019 However the parties. should also be prepared for a later trial date and shall inform. the court of their availability for trial in August 2019 by. joint letter submitted no later than one week from the date of. this Order,DISCUSSION,I LEGAL STANDARD,When deciding issues in a patent case a district. court applies the law of the circuit in which it sits to non. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 5 of 16 PageID 11610. patent issues and the law of the Federal Circuit to issues of. substantive patent law In re Cambridge Biotech Corp 186 F 3d. 1356 1368 Fed Cir 1999 see also Coconut Grove Pads Inc. v Mich Mich TGR Inc 222 F Supp 3d 222 250 n 6 E D N Y. 2016 Federal Circuit law also governs issues that are not. substantive patent law if the issue pertains to patent law if. it bears an essential relationship to matters committed to the. exclusive control of the Federal Circuit by statute or if it. clearly implicates the jurisprudential responsibilities of the. Federal Circuit in a field within its exclusive jurisdiction. Midwest Indus Inc v Karavan Trailers Inc 175 F 3d 1356. 1359 Fed Cir 1999 en banc in relevant part internal. citations and quotation marks omitted,A Inter Partes Review.
The America Invents Act AIA Pub L No 112 29, 125 Stat 284 2011 introduced IPR as a procedure in which the. PTAB may review the patentability of one or more claims in a. patent See generally 35 U S C 311 319 The IPR process. allows a party to petition the PTO to establish the invalidity. of certain claims in a patent under Sections 102 or 103 of Title. 35 Id 311 a b Institution of IPR is discretionary and. the PTAB may decide to institute IPR on all some or none of. the petitioned grounds 35 U S C 314 a 37 C F R, 42 108 a T he Board may authorize the review to proceed on. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 6 of 16 PageID 11611. all or some of the challenged claims and on all or some of the. grounds of unpatentability asserted for each claim id. 42 108 b At any time prior to institution of IPR the Board. may deny some or all grounds for unpatentability for some or all. of the challenged claims An instituted IPR proceeding is. held before a panel of three administrative judges 35 U S C. 6 a c 311 and the panel issues a final written decision. usually within twelve months with respect to the patentability. of the patent claims challenged by the petitioner id. This procedure was enacted with the policy goals of. streamlining the patent process in general and in focusing. patent enforcement litigation thus limiting costs for all. parties and preserving judicial resources SAS Inst Inc v. ComplementSoft LLC 825 F 3d 1341 1357 Fed Cir 2016. Newman J concurring in part dissenting in part The. America Invents Act was designed after a decade of hearings and. revisions to reduce the cost of patent litigation to resolve. major validity issues in an expert tribunal and to put an end. to repetitive challenges rev d on other grounds SAS Inst. Inc v Iancu 138 S Ct 1348 2018 The legislative history. of 315 e indicates that Congress intended IPR to serve as a. complete substitute for litigating the validity of patent claims. in the district court See e g Patent Reform Act of 2009. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 7 of 16 PageID 11612. Hearing Before the House Comm on the Judiciary 111th Cong 153. 2009 statement of Rep Manzullo It is clearly appropriate. to have an administrative process for challenging patent. validity but it should exist within a structure that guarantees. a quick and final determination Patent Reform The Future of. American Innovation Hearing Before the Senate Comm on the. Judiciary 110th Cong 13 2007 statement of Jon Dudas. Director USPTO T he estoppel needs to be quite strong that. says on the second window any issue that you raised or could. have raised you can bring up no place else That second window. from the administration s position is intended to allow. nothing a complete alternative to litigation see also. Douglas Dynamics LLC v Meyer Prods LLC No 14 CV 886 2017. U S Dist LEXIS 58773 at 13 W D Wisc Apr 18 2017,B ESTOPPEL. To give effect to the Congressional goal of reducing. the costs of patent litigation and resolving issues before an. expert patent tribunal the AIA codified an estoppel provision. meant to prevent an unsuccessful IPR petitioner from later. arguing in a related patent infringement case that a claim is. invalid on any ground that the petitioner raised or reasonably. could have raised during that IPR 35 U S C 315 e 2. The Federal Circuit ruled in Shaw that this estoppel provision. does not apply to rejected non instituted grounds that were. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 8 of 16 PageID 11613. included and thus raised in an IPR petition but never. instituted by the PTAB as part of the IPR Shaw Indus Grp. Inc 817 F 3d at 1300 The court in Shaw did not however. address the circumstances presently before the court when a. litigant seeks to argue invalidity on non petitioned grounds. grounds that it never included or raised in its IPR petition in. the first place but reasonably could have, In reaching its decision in Shaw the Federal Circuit. noted that estoppel applies to any ground that the petitioner. raised or reasonably could have raised during that IPR thus. applying its literal meaning Id emphasis added The. Federal Circuit reasoned that an IPR does not begin until it is. instituted by the PTO Id Therefore according to the court. in Shaw a ground that is not instituted by the PTO could not. have been reasonably raised during an IPR and the petitioner is. not estopped from arguing the ground in a later infringement. action Id see also In re Cuozzo Speed Technologies LLC 793. F 3d 1268 1272 Fed Cir 2015 IPRs proceed in two phases. In the first phase the PTO determines whether to institute IPR. In the second phase the Board conducts the IPR proceeding and. issues a final decision citations omitted Accordingly. the court in Shaw held that 315 e 2 s plain language. prohibit ed the application of estoppel when the petitioner. did not raise nor could it have reasonably raised the. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 9 of 16 PageID 11614. rejected ground during the IPR Shaw Indus Grp Inc 817. F 3d at 1300 emphasis in original,II ANALYSIS, Plaintiffs seek to preclude Presidio from raising new.
non petitioned prior art references in this action based on. 315 e 2 Both parties claim that a majority of district. courts that have confronted this issue have applied Shaw as they. argue it should be applied The court finds in any event that. a majority of district courts applying Federal Circuit precedent. would not control this court s decision Of course the. reasoning of sister courts are likely to be helpful to this. court in reaching its decision Plaintiffs assert that Shaw. should be given a narrow interpretation to apply only to non. instituted grounds and cite to several district courts that have. so ruled in circumstances similar to those before the court. JSL at 2 See e g Cobalt Boats LLC v Sea Ray Boats, Inc No 15 CV 0021 2017 U S Dist LEXIS 96909 at 8 E D. Va June 5 2017 concluding that estoppel applies to non. petitioned grounds Biscotti Inc v Microsoft Corp No 13. CV 1015 2017 U S Dist LEXIS 144164 at 22 23 E D Tex May. 11 2017 applying estoppel to non petitioned grounds that the. petitioner reasonably could have raised in its IPR petition. adopted by 2017 U S Dist LEXIS 143675 at 4 E D Tex June. 2 2017 iLife Techs Inc v Nintendo of Am Inc No 13 CV. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 10 of 16 PageID 11615. 4987 2017 U S Dist LEXIS 87769 at 18 19 N D Tex May 30. 2017 Network 1 Techs Inc v Alcatel Lucent USA Inc No. 11 CV 492 2017 U S Dist LEXIS 178857 at 10 11 E D Tex. Oct 27 2017 Parallel Networks Licensing LLC v IBM Corp. No 13 CV 2072 2017 U S Dist LEXIS 28461 at 27 30 D Del. Feb 22 2017 Oil Dri Corp of Am v Nestle Purina Petcare. Co No 15 CV 1067 2017 U S Dist LEXIS 121102 at 17 27. N D Ill Aug 2 2017 Douglas Dynamics 2017 U S Dist,LEXIS 58773 at 11 13. Courts that have found Shaw applies only to non, instituted grounds that is courts that have estopped a. petitioner from asserting invalidity grounds the petitioner did. not but could have petitioned for IPR focus on the policy. goals animating the IPR process and the estoppel provision. See e g Network 1 Techs 2017 U S Dist LEXIS 178857 at 7. Limiting estoppel would frustrate the litigation, efficiencies the America Invents Act was designed to produce. Douglas Dynamics 2017 U S Dist LEXIS 58773 at 13 This. interpretation respects the statutory language and it is. consistent with the legislative history which clearly suggests. that Congress intended IPR to serve as a complete substitute for. litigating validity in the district court Some of those. courts have reasoned that not estopping a party would allow a. second bite at the apple and would negate any time or cost. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 11 of 16 PageID 11616. savings intended to be generated by the IPR process Parallel. Networks Licensing 2017 U S Dist LEXIS 28461 at 30 Cobalt. Boats 2017 U S Dist LEXIS 96909 at 8 9 It would waste. this Court s time to allow a stay for a year during IPR. proceedings and then review invalidity arguments that Defendants. could and perhaps should have raised in their IPR petition. Defendant responds by citing to several courts that. have extended the Federal Circuit s literal reading of 35 U S C. 315 e 2 in Shaw and thus permitted a petitioner to raise. non petitioned grounds that were accordingly not among the. grounds on which the PTAB instituted IPR See e g, Intellectual Ventures I LLC v Toshiba Corp 221 F Supp 3d.
534 553 54 D Del 2016 applying Shaw to non petitioned. grounds but noting that such a result confounds the very. purpose of this parallel administrative proceeding. Koninklijke Philips N V v Wangs All Corp No 14 CV 12298. 2018 WL 283893 at 4 D Mass Jan 2 2018 The broader, reading of the estoppel provision is foreclosed by Shaw. Finjan Inc v Blue Coat Sys LLC 283 F Supp 3d 839 856 57. N D Cal 2017 see also Verinata Health Inc v Ariosa. Diagnostics Inc No 12 CV 5501 2017 WL 235048 at 3 N D. Cal Jan 19 2017 collecting cases Cf HP Inc v MPHJ, Tech Invs LLC 817 F 3d 1339 1347 Fed Cir 2016 holding. estoppel provision in 35 U S C 315 e 1 with identical. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 12 of 16 PageID 11617. raised or reasonably could have raised during the IPR. language did not apply to non instituted grounds 1. The court finds that Shaw does not foreclose, plaintiffs position that non petitioned grounds are subject to. 315 e 2 s estoppel provision Indeed Shaw dealt only with. petitioned but non instituted grounds and the Federal Circuit. has not considered estoppel for non petitioned grounds See Oil. Dri Corp of Am 2017 U S Dist LEXIS 121102 at 19 Shaw. focused on noninstituted grounds rather than nonpetitioned. grounds t hus there is no binding case that is directly. on point Although Shaw s reasoning has been extended by some. district courts to non petitioned grounds because non petitioned. grounds literally could not have been raised during IPR for. this court to so hold would render the estoppel provision. meaningless See Cobalt Boats 2017 U S Dist LEXIS 96909 at. 8 T he broad reading of Shaw renders the IPR estoppel. provisions essentially meaningless because parties may pursue. two rounds of invalidity arguments as long as they carefully. craft their IPR petition cf Intellectual Ventures I 221. F Supp 3d 534 553 54 Although extending the Federal. 1 The PTAB similarly takes this approach when considering successive IPR. petitions under 35 U S C 315 e 1 Great W Cas Co v Intellectual. Ventures II LLC IPR No 2016 01534 Paper No 13 at 10 11 14 PTAB Feb. 15 2017 T he Board s determination not to institute an IPR is. not a final written decision and thereby does not trigger the estoppel. provisions under 35 U S C 315 e, Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 13 of 16 PageID 11618. Circuit s logic in Shaw to prior art references that were. never presented to the PTAB at all despite their public nature. confounds the very purpose of this parallel administrative. proceeding the court cannot divine a reasoned way around the. Federal Circuit s interpretation in Shaw reconsideration. denied 2017 WL 107980 at 1 D Del Jan 11 2017,Although various district courts have ruled in a.
manner favorable to either parties positions given the dearth. of guidance from the Federal Circuit this court finds. persuasive the reasoning in Milwaukee Electric Tool Corp v. Snap On Inc 271 F Supp 3d 990 E D Wisc 2017 and Oil Dri. Corp of America,The court in Milwaukee Electric Tool sought to. preserve some of the policy goals supporting the creation of IPR. in holding that a petitioner is estopped from asserting. invalidity contentions based on prior art that it could. reasonably have included in its IPR petition but did not. Milwaukee Elec Tool 271 F Supp 3d at 1029 The court. explained that a petitioner who raises grounds that are not. instituted to no fault of its own has not had a full hearing. on the merits of its invalidity contentions Id quoting Oil. Dri Corp of Am 2017 U S Dist LEXIS 121102 at 23 see. also Verinata Health Inc 2017 WL 235048 at 3 Indeed. limiting IPR estoppel to grounds actually instituted ensures. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 14 of 16 PageID 11619. that estoppel applies only to those arguments or potential. arguments that received or reasonably could have received. proper judicial attention Conversely a petitioner that. chooses not to raise certain invalidity grounds in its IPR. petition only has itself to blame See Oil Dri Corp of Am. 2017 U S Dist LEXIS 121102 at 26 T he fairness and due. process concerns that arise in the context of noninstituted. grounds do not exist in the context of nonpetitioned. grounds The Milwaukee Electric Tool court concluded that a. petitioner is subject to IPR estoppel when it fails to raise. those grounds it reasonably could have raised in its IPR. petition Milwaukee Elec Tool 271 F Supp 3d at 1029 see. also Oil Dri Corp of Am 2017 U S Dist LEXIS 121102 at 22. 23 I f a party does not include an invalidity ground in its. petition that it reasonably could have included it necessarily. has not raised a ground that it reasonably could have raised. during that IPR,Presidio s view of 315 e 2 would only trigger. estoppel in the odd situation when a petitioner raises a ground. in a petition the PTAB subsequently institutes IPR on that. ground the petitioner then chooses not to argue invalidity on. that ground during the IPR but once again changes course to. raise that invalidity ground in federal court Such a. capricious strategy is hard to fathom and indeed warrants. Case 2 14 cv 06544 KAM GRB Document 142 Filed 01 30 19 Page 15 of 16 PageID 11620. estoppel but is hardly the only inefficiency the AIA and IPR. intended to counter See Oil Dri Corp of Am 2017 U S Dist. LEXIS 121102 at 23 24 The Court has difficulty understanding. why a party would pursue such a strategy As the court in. Oil Dri Corp of America reasoned the policy goals driving the. creation of the IPR process support a broader interpretation of. the estoppel provision of 315 as the narrow interpretation. invites parties to take a second bite at the apple and would. hardly promote efficiency or reduce the burden on federal. courts Id at 25, This court agrees with the Milwaukee Electric Tool and. Oil Dri Corp of America courts and thus holds that Presidio is. barred by the estoppel provision of 315 and thus may not. supplement its invalidity contentions to raise grounds that it. reasonably could have raised in its IPR petition challenging the. 547 Patent When a party chooses to seek IPR but only on. certain grounds that choice comes with consequences notably. the risk of estoppel under 315 e 2 See iLife Techs 2017. U S Dist LEXIS 87769 at 18 19 Defendant should have. presented all of its best evidence In exchange for the. expedited adjudication of its best case defendant, surrendered the right to judicial review of its secondary. grounds for invalidity quoting Douglas Dynamics 2017 U S. Dist LEXIS 58773 at 5 Accordingly the court declines to.


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