In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds in inter partes reexamination proceedings. At issue was whether pre-America Invents Act (AIA) reexamination estoppel under 35 U.S.C. § 315(c) applies even if the patent owner raises a different claim construction in district court than the USPTO applied during reexamination. The District Court answered “yes,” reasoning that a “party’s proposed construction of a term does not change . . . whether a party previously asserted that a claim … was obvious in an inter partes reexamination.”
D. Del.: Plaintiff’s Seeking Broader Construction in District Court Rather Than in Reexamination Does Not Preclude Reexamination Estoppel
February 6, 2023
Reading Time : 1 min
Victaulic owns U.S. Patent No. 7,712,796 (“the ʼ796 Patent”), which relates to a “deformable mechanical pipe coupling.” Independent claims 1, 21, 41 and 44 of the ʼ796 Patent each includes a “being deformable” limitation, which recites “said segments being deformable upon adjustable tightening of said connection members so as to substantially conform the curvature of said arcuate surfaces to the outer surfaces of said pipe elements within said circumferential grooves.”
In 2012, ASC requested inter partes reexamination of certain claims of the ʼ796 Patent, including claims 1, 21, 41 and 44. ASC’s request asserted obviousness grounds against those claims based on “Reynolds” and “Reynolds in view of Webb.” The USPTO instituted reexamination on both of those grounds but determined that the claims were “valid and patentable” in a final decision.
Notably, during reexamination, the USPTO agreed to add language to the “being deformable” limitation in claims 21, 41 and 44—but not in claim 1. However, the USPTO “mistakenly omitted” the added language from its decision, and the claims were not formally amended to add that language.
In 2020, Victaulic asserted claim 1 of the ʼ796 Patent against ASC in the District of Delaware, among other claims. In its invalidity contentions for claim 1, ASC again asserted “Reynolds” and “Reynolds in view of Webb.”
In a motion for summary judgment, Victaulic argued that ASC was estopped from asserting “Reynolds” or “Reynolds in view of Webb” against claim 1 under 35 U.S.C. § 315(c) because ASC raised those grounds in the reexamination proceedings. Section 315(c) states that a “third-party requester” like ASC is “estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the [] requester raised or could have raised during the inter partes reexamination proceedings.”
In response, ASC argued that its Reynolds and Webb-based obviousness grounds were not “raised” and “could not have been raised” in the reexamination proceedings because the two proceedings involve different claim interpretations of the “being deformable” limitation in claim 1. Specifically, ASC argued that, during reexamination, the USPTO applied a narrow interpretation of “being deformable” in claim 1 that necessarily included the additional language that was supposed to be added to claims 21, 41 and 41. Thus, according to ASC, estoppel should not apply because “Victaulic now asserts an interpretation of the [‘being deformable’] claim limitation . . . in claim 1 that is broader than the Board’s interpretation of the claim,” which presents new “issues” when asserting Reynolds and Webb in district court.
The District Court rejected ASC’s argument, ruled that estoppel applied, and granted summary judgment in favor of Victaulic. In coming to its conclusion, the District Court determined that “raised or could have raised” in § 315(c) refers to whether the same claims are at issue, not the same interpretations, citing In re Affinity Labs of Texas, LLC, 856 F.3d 883, 891-92 (Fed. Cir. 2017). When ASC requested reexamination, claim 1 “had the same language as it has now,” which “has only ‘one correct construction.’” Accordingly, even if Victaulic is applying a different construction than the USPTO, that “does not change either how the Court must construe that term or whether a party previously asserted that a claim which includes that term was obvious in an inter partes reexamination.” Accordingly, ASC was “estopped from asserting in this action that Claim 1 of the ʼ796 Patent is invalid as obvious in view of Webb and Reynolds because ASC raised or could have raised those invalidity grounds in the [reexamination].”
The District Court further noted in a footnote that “ASC could have raised its real argument—i.e., that the IPR added limitations to Claim 1” had it not “forfeited the chance to bring such a motion” (citing a sealed document).
Practice Tip: In light of estoppel provisions under pre- and post-AIA patent statutes, practitioners should proceed with caution when asserting the same prior art in district court that they asserted in prior proceedings, including reexaminations, before the USPTO. As shown in Victaulic, the Patent Act’s estoppel provisions are “severe” and may apply even if claims are interpreted or construed differently between the proceedings.
Victaulic Company v. ASC Engineered Sols., LLC., Civil Action No. 20-887-GBW (D. Del. Nov. 30, 2022).
Victaulic owns U.S. Patent No. 7,712,796 (“the ʼ796 Patent”), which relates to a “deformable mechanical pipe coupling.” Independent claims 1, 21, 41 and 44 of the ʼ796 Patent each includes a “being deformable” limitation, which recites “said segments being deformable upon adjustable tightening of said connection members so as to substantially conform the curvature of said arcuate surfaces to the outer surfaces of said pipe elements within said circumferential grooves.”
In 2012, ASC requested inter partes reexamination of certain claims of the ʼ796 Patent, including claims 1, 21, 41 and 44. ASC’s request asserted obviousness grounds against those claims based on “Reynolds” and “Reynolds in view of Webb.” The USPTO instituted reexamination on both of those grounds but determined that the claims were “valid and patentable” in a final decision.
Notably, during reexamination, the USPTO agreed to add language to the “being deformable” limitation in claims 21, 41 and 44—but not in claim 1. However, the USPTO “mistakenly omitted” the added language from its decision, and the claims were not formally amended to add that language.
In 2020, Victaulic asserted claim 1 of the ʼ796 Patent against ASC in the District of Delaware, among other claims. In its invalidity contentions for claim 1, ASC again asserted “Reynolds” and “Reynolds in view of Webb.”
In a motion for summary judgment, Victaulic argued that ASC was estopped from asserting “Reynolds” or “Reynolds in view of Webb” against claim 1 under 35 U.S.C. § 315(c) because ASC raised those grounds in the reexamination proceedings. Section 315(c) states that a “third-party requester” like ASC is “estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid and patentable on any ground which the [] requester raised or could have raised during the inter partes reexamination proceedings.”
In response, ASC argued that its Reynolds and Webb-based obviousness grounds were not “raised” and “could not have been raised” in the reexamination proceedings because the two proceedings involve different claim interpretations of the “being deformable” limitation in claim 1. Specifically, ASC argued that, during reexamination, the USPTO applied a narrow interpretation of “being deformable” in claim 1 that necessarily included the additional language that was supposed to be added to claims 21, 41 and 41. Thus, according to ASC, estoppel should not apply because “Victaulic now asserts an interpretation of the [‘being deformable’] claim limitation . . . in claim 1 that is broader than the Board’s interpretation of the claim,” which presents new “issues” when asserting Reynolds and Webb in district court.
The District Court rejected ASC’s argument, ruled that estoppel applied, and granted summary judgment in favor of Victaulic. In coming to its conclusion, the District Court determined that “raised or could have raised” in § 315(c) refers to whether the same claims are at issue, not the same interpretations, citing In re Affinity Labs of Texas, LLC, 856 F.3d 883, 891-92 (Fed. Cir. 2017). When ASC requested reexamination, claim 1 “had the same language as it has now,” which “has only ‘one correct construction.’” Accordingly, even if Victaulic is applying a different construction than the USPTO, that “does not change either how the Court must construe that term or whether a party previously asserted that a claim which includes that term was obvious in an inter partes reexamination.” Accordingly, ASC was “estopped from asserting in this action that Claim 1 of the ʼ796 Patent is invalid as obvious in view of Webb and Reynolds because ASC raised or could have raised those invalidity grounds in the [reexamination].”
The District Court further noted in a footnote that “ASC could have raised its real argument—i.e., that the IPR added limitations to Claim 1” had it not “forfeited the chance to bring such a motion” (citing a sealed document).
Practice Tip: In light of estoppel provisions under pre- and post-AIA patent statutes, practitioners should proceed with caution when asserting the same prior art in district court that they asserted in prior proceedings, including reexaminations, before the USPTO. As shown in Victaulic, the Patent Act’s estoppel provisions are “severe” and may apply even if claims are interpreted or construed differently between the proceedings.
Victaulic Company v. ASC Engineered Sols., LLC., Civil Action No. 20-887-GBW (D. Del. Nov. 30, 2022).
Previous Entries
IP Newsflash
December 2, 2024
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and thus the same “inventive entity,” as the challenged claims.
IP Newsflash
December 2, 2024
The Patent Trial and Appeal Board rejected a patent owner’s assertion that petitioner should have named a third party, which was a defendant in a related district court patent infringement litigation and a party to a joint defense agreement (JDA) with petitioner, as a real party-in-interest (RPI). Had the board ruled otherwise and found the third party to be an RPI, the petition would have been time-barred under 35 U.S.C. § 315(b).
IP Newsflash
November 27, 2024
A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the designs at issue, and thus could assist the factfinder in determining design patent infringement under the ordinary observer test.
IP Newsflash
November 5, 2024
The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal Circuit held that only those “red flags” that related to the successful Section 101 defense, which served as the basis for the district court’s grant of summary judgment, could be used to show the case was fatally flawed.
IP Newsflash
November 1, 2024
The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary skill in the art” (POSITA), the expert must at least meet the definition of a POSITA for the patents-in-suit. Absent that level of skill, Kyocera holds that the witness’s testimony is not sufficiently reliable or relevant enough to be relied on by a fact-finder.
IP Newsflash
October 29, 2024
The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent owner had not taken inconsistent positions but warned patent owner that it had an ongoing duty to produce any information inconsistent with arguments made during the present IPR, even if that information related to arguments patent owner had dropped at the ITC.
IP Newsflash
October 11, 2024
The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive injury. In doing so, took a clear stand on an issue with a nationwide split among district courts.
IP Newsflash
October 10, 2024
In a patent case containing a variety of federal and state law claims, the District of Massachusetts retained supplemental jurisdiction over the state law claims even after all the federal law claims were dismissed.
© 2024 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.