District Court Finds Estoppel for Non-Petitioned Grounds but not for Dicta, <i>PTAB Litigation</i>

District Court Finds Estoppel for Non-Petitioned Grounds but not for Dicta, PTAB Litigation

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Since the Federal Circuit’s decision in Shaw Indus. Grp., Inc. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), district courts have been finding no estoppel in court proceedings for invalidity positions that were presented, but not instituted, in counterpart IPR proceedings. But what about "non-petitioned grounds" (i.e., grounds never raised in an IPR petition to begin with) or dicta by the PTAB about teachings of asserted prior art references? The District Court in Oil-Dri Corporation of America v. Nestle Purina Petcare Company recently found that non-petitioned grounds that were not raised in a counterpart IPR petition, but reasonably could have been raised, gave rise to estoppel that precluded presenting those grounds for invalidity in district court. Oil-Dri, 1-15-cv-01067 (ILND August 2, 2017, Order). The Court also found that PTAB dicta stating that a single prior art reference would not render claims unpatentable did not give rise to estoppel for that reference in district court because, though a petitioned ground, the PTAB did not institute on that ground and because the PTAB stated that such ground "was not properly part of [the IPR proceeding]."

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