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Legal Precedent Regarding IPR Estoppel

by: David Nickelson, Director of Research

A recent order in American Technical Ceramics Corp. et al v. Presidio Components, Inc., [2-14-cv-06544 (NYED 2019-01-30, Order)] caught my attention. In that decision the court ruled that IPR Estoppel is not limited to invalidity grounds raised in the petition and therefore the defendant was estopped from raising the new grounds of invalidity.

Having done some work as an expert witness in an IPR estoppel case, the ruling showcases several risks that I have come to be familiar with.

One such risk is the cloudy field of legal precedent regarding IPR estoppel. While both parties argued that the majority of district court decisions supported their position, the court decided that neither was correct, writing that: 

a majority of district courts applying Federal Circuit precedent would not control this court’s decision.

The second risk I want to highlight is the danger of failing to complete a thorough prior art search before challenging a patent, whether in an IPR proceeding or in district court. In this particular case I was unable to identify the reasons the defendant did not initially raise the additional grounds, and in fact the court appeared to be murky on the issue as well, stating “…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.”

Whatever the reason, the initial search for prior art failed to identify references that the defendant later sought to introduce. This case highlights the need for high quality patent research. While we don’t know the reasons that relevant prior art was initially missed in this case, it is clear that such a miss was costly to the defendant.

At Techson we pride ourselves on high quality research that’s done right the first time. As we continue towards our rollout of our Limestone research platform, a tool which augments the abilities of our highly skilled search team, it’s interesting to wonder whether we could have saved this defendant from a costly mistake.