COURT DENIES IPR ESTOPPEL REQUEST FOR OBVIOUSNESS DEFENSE USING A PRIMARY PATENT THAT WAS PREVIOUSLY ESTOPPED AS AN ANTICIPATORY REFERENCE

In Oil-Dri Corporation of America v. Nestle Purina Petcare Company, the Illinois Northern District Court denied Oil-Dri’s request for summary judgment of Nestle’s obviousness defense on the grounds that Nestle was not estopped from presenting that the patent-in-suit was obvious in view of a Japanese patent combined with a prior art product. Oil-Dri argued for estoppel on the grounds that Nestle failed to cite the Japanese patent during a related IPR proceeding, and pointed out that Nestle had already been estopped from raising an anticipatory defense based on the same patent.

Nestle argued the IPR estoppel did not apply because it sought to combine the Japanese patent with a prior art product, making it a separate ground from what was previously estopped. Nestle also noted that the prior art product was not a printed publication and therefore did not meet the requirements to be raised in an IPR.

The Court noted that “[w]here there is evidence that a petitioner had reasonable access to printed publication corresponding to or describing a product that it could have proffered during the IPR process, it cannot avoid estoppel simply by pointing to its finished product (rather than the printed materials) during litigation.” The Court found no evidence on the record that there was a printed publication available to Nestle that described the composition of the prior art product. The Court therefore concluded that IPR estoppel did not apply to the obviousness grounds asserted by Nestle.

A link to the decision is found here.