User Manuals & Corresponding Product Estoppel under 315(e)(2)

District courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent) demonstrates that the product described in the previously examined manual is technically superior to the manual teachings. Yet, other districts are adopting an absolute prohibition..

Most recently, in Polaris Industries, Inc. v. Artic Sales Cat Inc. et. al, (here) Polaris argued that 315(e)(2) estoppel prevented Artic Cat from raising seven prior art combinations asserted in the district court litigation. The court granted summary judgment on estoppel as to four of the combinations, which were directed to written prior art references. Three of the seven combinations, however, relied on physical products (off-road vehicles). The district court found that Artic Cat “could not have reasonably raised” the three combinations based on physical products during IPR, and denied the Polaris’s motion for summary judgment concerning those combinations.

Polaris, for its part, argued that the manuals disclose all relevant information regarding the vehicles, and that allowing Artic Cat to rely on the physical vehicles would allow Artic Cat to essentially “end-run estoppel.”

The court ultimately found that “Polaris has not produced, nor could this court find, any court granting the relief Polaris now requests—to apply § 315(e)(2) estoppel to products. Although some courts have suggested that this relief may be possible such a rule has not been recognized by any circuits. Thus, the Court declines to adopt such a rule here.” The court thus expressly declined to adopt the suggestion in Oil-Dri Corp. of America v. Nestlé Purina Petcare Co., (here), and instead adopted a blanket rule that “products embodying patents or printed publications are not subject to § 315(e)(2) estoppel.” The district of Minnesota appears to have joined N.D. Texas, the only other court to adopt such a rule. Zitovault, LLC v. IBM, No. 3:16-cv-0962-M, 2018 U.S. Dist. LEXIS 117339, at *12-13 (N.D. Tex. Apr. 4, 2018); iLife Techs. Inc. v. Nintendo of Am., Inc., No. 3:13-cv-4947-M, 2017 U.S. Dist. LEXIS 87769, at *16 (N.D. Tex. May 30, 2017).

There is now a district split: C.D. Cal. and N.D. Ill. suggest that estoppel is possible where a prior art product manual that sufficiently detailed the product was available to the petitioner. N.D. Tex. and now D. Minn., have seemingly adopted a blanket rule that estoppel does not apply to products, regardless of the substantive disclosures in the manual.

Eventually, the Federal Circuit will weigh in on this issue as more 315(e)(2) disputes make their way to appeal.