Court Sheds Light on "Reasonably Could Have Raised" IPR Estoppel
The petitioner estoppel provision of Inter Partes Review (IPR), 35 U.S.C. § 315(e)(2), precludes a petitioner from asserting invalidity in a subsequent litigation or ITC action "on any ground that the petitioner raised or reasonably could have raised during that inter partes review." Frequently, petitioners struggle with the metes and bounds of the language "reasonably could have raised." Does it encompass only patents and printed publication that could have been uncovered in a reasonably diligent search, as suggested by some? What about the use of product manuals — does use of a printed manual foreclose later use of the underlying product in litigation?
While we await case law clarification on the former query, the latter was recently addressed in Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order)
In Star, defendant Redline sought IPR of two claims of U.S. patent 6,526,808 relating to leak detection in fluid systems. Although IPR was instituted by the USPTO Patent Trial & Appeal Board (PTAB), the proposed grounds of unpatentability were ultimately denied in a final written decision, and §315 (e)(2) estoppel attached to the petitioner, Redline.
Subsequently, Star argued that Redline should be estopped in the litigation from raising invalidity as to a certain physical system. Star noted that while the physical system could not be considered in IPR, the product manual could have been. And, that Star possessed the product manual at the time of IPR, and, thus, "could have raised" it.
The court rejected this argument distinguishing the manual from the product in terms of disclosure quality, explaining (Order here):
[T]he physical machine itself discloses features claimed in the '808 Patent that are not included in the instruction manual, and it is therefore a superior and separate reference. For example, claim nine of the '808 Patent requires "locating a heating element within a closed smoke producing chamber." . . . .It is undisputed that the LeakMaster's instruction manual does not describe the LeakMaster's closed smoke producing chamber. However, the Leakmaster itself, if dissembled, could shed light on whether it practices this claim limitation.
Based upon this reasoning, it would seem that the breadth of estoppel for product manuals may depend on the technology. That is to say, physical products may not be explained in enough detail in their accompanying manuals to satisfy certain structural, claim details. See Also ACCO Brands, Inc. v. PC Guardian Anti-Theft Products, Inc.3-04-cv-03526 (N.D. Cal., December 4, 2008) On the other hand, software manuals are very likely to explain detailed functionality found in computer-implemented patent claims.
IPR Petitioners targeting computer-implemented functionality should be prepared to use available prior art manuals, or face the prospect of losing both the manual and associated software product to IPR estoppel.
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