District Court Not Persuaded System Prior Art Evades IPR Estoppel

by | Nov 26, 2024 | Estoppel, Evidentiary Issues, Prior Art Issues

By Dalton Earich,* Matt Modderman, and Matt Johnson –

On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed publication listed in its Amended Election of Asserted Prior Art (“Amended Election”). Promptu Sys. Corp. v. Comcast Corp., No. 2:16-cv-06516, Dkt. No. 390 at 3 (E.D. Pa. Oct. 25, 2024) (“Order”). The court found that this information was both relevant for Promptu Systems Corporation’s (“Promptu”) defense of inter partes review (“IPR”) estoppel and not protected as attorney work product. Id. at 3 n.2.

Stepping back, Promptu originally alleged Comcast infringed U.S. Patent Nos. 7,047,196 and 7,260,538—related to speech recognition services—in December 2016. Promptu Sys. Corp. v. Comcast Corp., 92 F.4th 1372, 1374 (Fed. Cir. 2024). The case was stayed between July 2018 and September 2020, after Comcast filed six IPR petitions and two covered business method review petitions. Id. at 1376. Following the USPTO proceedings, the district court performed claim construction, resulting in the parties’ joint stipulation to entry of final judgment of noninfringement. Id. at 1377. Promptu appealed the claim constructions, and the Federal Circuit vacated and remanded for further proceedings in February 2024. Id. at 1374.

Upon return to district court, the parties resumed fact discovery. A dispute arose pertaining to Comcast’s Amended Election. Order at 1. Specifically, Promptu first requested that Comcast limit the number of references to twelve. Id. at 1 n.1. The Court denied that request because, although Comcast may point to multiple references to support its system art, the Court was “not persuaded Comcast should be precluded from treating each system as a single prior art reference for purposes of the 12-reference limit.” Id. Second, Promptu requested that Comcast identify the date on which it or its counsel learned of each patent, patent application, and printed publication listed in its Amended Election. Id. at 3 n.2. Promptu argued that this information was necessary for its defense of IPR estoppel. Id. IPR estoppel applies when a petitioner in an IPR proceeding, that results in a final written decision, asserts invalidity in a subsequent civil action on any ground which they “raised or reasonably could have raised” in the IPR. Id. (quoting 35 U.S.C. § 315(e)(2)).

Responding to the second request, Comcast argued that the dates it learned of the references in its Amended Election were not relevant to IPR estoppel because its invalidity position relies on system prior art. Order at 3 n.2. The Court acknowledged that, “[i]n general, IPR estoppel does not apply to device art, because ‘a petitioner cannot use an IPR to challenge the validity of a patent claim . . . based on prior art products or systems.’” Id. (quoting IOENGINE, LLC v. Paypal Holdings, Inc., 607 F. Supp. 3d 464, 511 (D. Del. 2022)). But, the Court remarked, the Amended Election asserted that the prior art systems were “disclosed by numerous printed publications.” Id. And “[w]hether and how § 315(e)(2) applies to products and systems that are related to printed publications or patents that could have been raised at IPR is a question that has not been definitively resolved.” Id. (quoting Singular Computing LLC v. Google LLC, 668 F. Supp. 3d 64, 70 (D. Mass. 2023)). “Within the Third Circuit, some courts have held IPR estoppel extends to device art where the device is cumulative of a patent or printed publication that could have been raised during the IPR proceedings—i.e., where the device is ‘simply a printed publication invalidity theory in disguise.’” Order at 3 n.2. (citing IOENGINE, LLC, 607 F. Supp. 3d at 513; Wasica Fin. GmbH v. Schrader Int’l, Inc., 432 F. Supp. 3d 448, 453 (D. Del. 2020)). “Other courts have held estoppel does not apply to any invalidity theory that relies even in part on a prior art system.” Id. (citing IPA Techs. v. Microsoft Corp., No. 18-1, 2024 WL 1797394, at *6–7 (D. Del. Apr. 25, 2024) (characterizing this as the majority position)).

Ultimately, the Court did not decide whether IPR estoppel applied here. Order at 3 n.2. The Court merely found it sufficient that Promptu had raised the defense, thus the information Promptu sought was relevant. Id. In addition, the Court tossed aside Comcast’s argument that the dates were “subject to work product protection[.]” Id. Because the work product doctrine “does not preclude a party from discovering ‘relevant facts known or available to the other party, even though such facts are contained in a document which is not itself discoverable,’” the date Comcast learned of the references included in its Amended Election was discoverable. Id. (quoting Raso v. CMC Equip. Rental, Inc., 154 F.R.D. 126, 128 (E.D. Pa. 1994)).

Takeaway: Whether IPR estoppel applies to system prior art that is related to printed publications or patents that could have been raised at IPR has not been definitively resolved by the Federal Circuit. Accordingly, district courts can and do reach different outcomes on the issue. Thus, patent owners bringing suit may consider researching the available venues’ caselaw on the subject to determine which is most likely to extend IPR estoppel to system prior art.

* Dalton is a member of the New Lawyers Group in Jones Day’s Cleveland Office.

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Matthew Johnson

Partner at Jones Day
Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.