Finding Common Ground Federal Circuit Clarifies Ipr Estoppel

Written by:Nathan D. Reeves and Sarah Haj-Maharsi

INGENICO INC. v. IOENGINE, LLC

Before Dyk, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware.

Summary: IPR estoppel does not preclude reliance on public-use evidence that is substantively identical to printed publications that could have been raised in the IPR.

Ingenico filed a declaratory judgment action against IOENGINE, alleging invalidity. Before trial, Ingenico also filed IPR petitions challenging the validity of IOENGINE’s patents, which led to final written decisions. At trial, Ingenico introduced evidence of prior art systems, alleging invalidity based on public use. The jury found the claims invalid as anticipated and obvious.

On appeal, IOENGINE argued Ingenico should have been estopped from introducing its public-use evidence. IOENGINE argued that Ingenico’s prior art systems were cumulative of substantively identical printed publications that reasonably could have been raised in IPR, including the system’s Readme instruction document. The Federal Circuit disagreed. The court noted that IPR estoppel prohibits a petitioner from asserting grounds that were raised or reasonably could have been raised in an IPR. The Federal Circuit held that “grounds” in this context refers to theories of invalidity rather than the prior art itself.  Because theories of invalidity based in part on a public use cannot be raised in an IPR, they are not subject to estoppel in district court.  Accordingly, the Federal Circuit affirmed the district court’s decision.

Editor: Sean Murray