In a recent article published by Intellectual Asset Management, IP litigation counsel Matthew Shapiro analyzed a significant decision from the Federal Circuit concerning Ingenico Inc. v. IOENGINE, LLC. The court affirmed the district court’s ruling allowing Ingenico to present certain prior art at trial, indicating that inter partes review (IPR) estoppel did not prevent the use of this prior art.
This decision offers important insights into the scope of estoppel related to product or system prior art. Shapiro highlights that changes at the U.S. Patent and Trademark Office might compel patent challengers to propose broad stipulations. These stipulations would involve omitting any prior art in district courts to gain institution before the Patent Trial and Appeal Board (PTAB). This move could potentially counterbalance the Federal Circuit’s recent decision.
Shapiro stated, “Perhaps the PTAB is going to take a harder look at whether there is any overlap between what is being raised in the district court and at the PTAB and is going to, in some instances, encourage parties to file broader stipulations beyond what would be statutorily allowed to cover a broader scope of estoppel in order to secure institution.”
