"Particularly, the Federal Circuit clarified that (i) grounds not based on patents or printed publications (e.g., grounds based on device art and the like) are not within the scope of IPR estoppel; and (ii) IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use."
"The Federal Circuit recently issued a nonprecedential order denying IOENGINE, LLC's petition for panel rehearing and rehearing en banc in in Ingenico Inc. v. IOENGINE, LLC (No. 2023-1367). IOENGINE sought further review of the court's earlier decision on the boundaries of IPR estoppel, but the court declined to revisit the issue. The order marks the close of Federal Circuit review for this phase of a high-profile patent dispute and confirms the boundaries on IPR estoppel set by the Federal Circuit."
The Federal Circuit denied IOENGINE, LLC's petition for panel rehearing and rehearing en banc in Ingenico Inc. v. IOENGINE, LLC (No. 2023-1367), ending this phase of appellate review. The court clarified IPR estoppel under 35 U.S.C. §315(e), holding that grounds not based on patents or printed publications fall outside IPR estoppel and that a petitioner may still use the same patents and printed publications as evidence when asserting grounds that could not be raised in the IPR, such as prior known or used by others, on sale, or public use. The ruling remains controlling absent Supreme Court or en banc reversal and highlights the need for coordinated IPR and district-court strategies.
Read at Intellectual Property Law Blog
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