By Evan Tassis and Matt Johnson –
Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof, Investigation No. 337-TA-1329. The ALJ reasoned that Respondent was barred from asserting the same references it successfully asserted at the PTAB.
On May 15, 2024, the PTAB issued final written decisions in two IPRs, finding all challenged claims of U.S. Patent No. 10,593,330 and U.S. Patent No. 10,134,398 (the “Asserted Patents”), unpatentable. After the PTAB decisions, Respondent moved for summary determination at the ITC, arguing that all asserted claims were invalid as anticipated or obvious on similar grounds as those asserted in the IPRs.
While the ALJ agreed that substantively, Respondent may be entitled to a finding of invalidity of the Asserted Patents, estoppel precludes it. The ALJ highlighted 35 U.S.C. § 315(e)(2) which provides:
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.
Because Respondent had already raised the same invalidity grounds in the IPRs, the ALJ determined that IPR estoppel precluded Respondents from asserting those grounds again at the ITC.
Takeaway: Parties are reminded to carefully coordinate their litigation and IPR strategies, recognizing that arguments and prior art presented in IPRs may not be available for use in later proceedings due to statutory estoppel under 35 U.S.C. § 315(e)(2).
Matthew Johnson