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

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
April 1, 2025
valuation firms and an international bank based on the common interest exception. In so doing, the court reaffirmed that disclosure of privileged information
to third parties will generally waive privilege unless it can be shown that the parties’ interests are identical and the communications are legal, not solely
commercial....
IP Newsflash
March 24, 2025
not apply to a prior sale by an inventor when the sale is conducted in private. According to the Federal Circuit, a sale must disclose the relevant aspects of the
invention to the public to qualify for the prior art exception of Section 102(b)(2)(B)....
IP Newsflash
March 21, 2025
Supreme Court in Dewberry Group, Inc. v. Dewberry Engineers Inc. unanimously construed “defendant’s profits” in 35 USC § 1117(a) to mean that only the
named defendant’s profits can be awarded, not the profits of other related corporate entities. The Court, however, left open the possibility that other
language in § 1117(a) may allow for damages linked to the profits of related entities, if properly raised and supported....
IP Newsflash
March 13, 2025
what does not for the purposes of an anticipation defense. In short, a parenthetical citation was held to be insufficient, while three passages discussing a cited
reference met the test....
IP Newsflash
March 4, 2025
and Appeal Board. The 2022 memorandum effectively narrowed the application of discretionary denials in cases with parallel district court litigation by
specifying instances where discretionary denial could not be issued. With the withdrawal of the memorandum, individual PTAB panels will regain flexibility in
weighing discretionary denials. While the long-term effect of that increased flexibility is not yet known, the immediate effect is likely to be a shift towards the
discretionary analysis applied by PTAB panels before the issuance of the memorandum....
IP Newsflash
March 3, 2025
litigation counsel’s ability to practice before the Patent Office—without ever having represented the plaintiffs at the Patent Office in the past—weighed heavily
in favor of the bar....
IP Newsflash
February 12, 2025
description requirement. In so doing, the Federal Circuit explained that written description and enablement are evaluated based on the subject matter that is
claimed, not the products that practice those claims. As a result, the patentee was not required to describe unclaimed, later-discovered features of the
accused products despite the broad language in the claims that undisputedly covered the products....
IP Newsflash
January 24, 2025
patent, warranted a finding that defendant induced infringement....