In an unusual fact situation, Judge Andrews of the U.S. District
Court for the District of Delaware held that estoppel stemming from
a Final Written Decision of the PTAB could arise even if issued
after trial where the court has not yet entered final judgment on
the relevant ground. Novartis Pharmaceuticals Corp. v. Par
Pharmaceutical Inc., Case No. 14cv1289 (D. Del. April 11,
2019).
Plaintiff Novartis Pharmaceuticals had filed three patent
infringement suits against Defendant Par Pharmaceutical and related
suits against Defendants Breckenridge and West-Ward. Defendants
conceded infringement of U.S. Patent No. 5,665,772, but challenged
the validity of claims 1-3, 7, and 10 at trial. During litigation,
Par challenged claims 1-3 and 8-10 in an IPR proceeding. Par later
sought to challenge claim 7, but the PTAB declined to institute on
the later-challenged claim.
