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February 1, 2019Newsletter

This Week at the Board - February 1, 2019

District Court Prevents Defendant From Submitting Additional Prior Art That It Reasonably Could Have Submitted In IPR

In American Tech. Ceramics Corp. and AVX Corp. v. Presidio Components, Inc., the District Court for the Eastern District of New York determined that defendant Presidio was estopped from supplementing its invalidity contentions to include prior art that it could have reasonably raised during an IPR petition.

After motion practice, two rounds of claim construction and an IPR, Presidio requested leave to supplement its invalidity contentions related to one of the patents-in-suit. Plaintiffs objected on the grounds that Presidio was estopped from raising the prior art in the district court litigation because it could have raised it during the IPR proceeding. Presidio responded that because it did not petition the PTAB on the invalidity grounds it sought to add, it necessarily could not have raised the grounds during the IPR and is therefore not estopped. Presidio, however, did not explain why it did not include the grounds in the IPR it sought to supplement.

The district court noted that the AIA codified estoppel to prevent an unsuccessful IPR petitioner from later arguing in a related patent infringement case that a claim is invalid on any ground that were raised or reasonably could have been raised during the IPR. Although various district courts have ruled in a manner favorably to both parties, the court here determined “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.” While a petitioner should not be estopped from raising grounds that were not instituted through no fault of their own, “a petitioner that chooses not to raise certain invalidity grounds in its IPR petition only has itself to blame.”  The court therefore declined to reopen discovery for Presidio to serve new invalidity contentions on grounds that it could have, but chose not to raise in its IPR petition. 

A link to the decision is found here.

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