{"id":1508,"date":"2017-04-19T23:32:21","date_gmt":"2017-04-20T03:32:21","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1508"},"modified":"2017-04-19T23:49:27","modified_gmt":"2017-04-20T03:49:27","slug":"ipr-estoppel-ripe-for-gamesmanship","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1508","title":{"rendered":"IPR Estoppel: Ripe for Gamesmanship?"},"content":{"rendered":"

In Douglas Dynamics LLC, v. Meyer Products LLC<\/a>, [14-cv-886-jdp] (D. Wisc. Document # 68 April 18. 2017), the district court considered the scope of estoppel after an IPR. The Court identified three categories of potentially estopped grounds:<\/p>\n

    \n
  1. Grounds not petitioned.<\/li>\n
  2. Grounds petitioned but not instituted<\/li>\n
  3. Grounds instituted.<\/li>\n<\/ol>\n

    \"\"<\/a><\/p>\n

    As to the instituted grounds, these are clearly estopped. \u00a0As to the grounds petitioned but not instituted, after weighing the competing policy considerations, the court concluded that these were not estopped, citing\u00a0Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-5501, 2017 WL 235048, at *3 (N.D. Cal. Jan. 19, 2017) (collecting cases). Finally with respect to the grounds not petitioned, the court concluded that these were grounds that could have been raised, and thus were estopped. \u00a0The Court cited\u00a0SAS Inst., Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1354 (Fed. Cir. 2016) (Newman, J., dissenting), as well as Precision Fabrics Grp., Inc. v. Tietex Int’l, Ltd., No. 13-cv-645, 2016 WL 6839394, at *9 (M.D.N.C. Nov. 21, 2016); Clearlamp, LLC v. LKQ Corp., No. 12-cv-2533, 2016 WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016).<\/p>\n

    The impact of this decision, is that the PTAB’s decision not to institute on a particular grounds actually hurts<\/em> the patent owner, because estoppel does not apply. \u00a0A patent owner would be much better off if the ground were instituted, and denied. \u00a0Then, the challenger could not re-raise the grounds in court.<\/p>\n

    While the district court’s decision that the grounds that were not included in the petition were grounds that “could have been raised” and thus estopped, this determination creates a perverse incentive for patent challengers. \u00a0A patent challenger is much better off including these grounds in the IPR petition, perhaps in a way that essentiall guarantees they won’t be instituted, thereby insulating these grounds from the application of estoppel. \u00a0The district court noted that it is not bound by a refusal to institute, and while it will consider the PTAB’s reasoning “to the extent it is persuasive”, if the reason\u00a0for not instituting is that the grounds were not completely developed, a district court likely would allow the challenger not only to re-present the grounds, but to more fully develop it.<\/p>\n

    While the PTAB has the discretion not to institute an IPR, when they do so, they aren’t doing any favors for a Patent Owner. \u00a0The PTAB should liberally institute IPRs on the grounds that challengers present. \u00a0Denying the grounds in the final written decision instead of the institution decision better protects the \u00a0Patent Owner.<\/p>\n

     <\/p>\n","protected":false},"excerpt":{"rendered":"

    In Douglas Dynamics LLC, v. Meyer Products LLC, [14-cv-886-jdp] (D. Wisc. Document # 68 April 18. 2017), the district court considered the scope of estoppel after an IPR. The Court identified three categories of potentially estopped grounds: Grounds not petitioned. … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1508","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1508","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1508"}],"version-history":[{"count":4,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1508\/revisions"}],"predecessor-version":[{"id":1514,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1508\/revisions\/1514"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1508"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1508"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1508"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}