Invalidity Contentions As IPR Estoppel Markers

Invalidity Contentions Serve as Estoppel Benchmark

A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2)) This demonstration of proof can be complicated by a number of factual questions such as the degree of skill of the searcher, the complexity of the art, and what was known by the petitioner and when.

A recent decision in the Southern District of Texas looks to simplify such disputes by utilizing invalidity contentions as estoppel markers.

In Neuro Cardiac Technologies, LLC v. Livanova, Inc., No. H-18-1517, the court analyzed how to preemptively address estoppel after a petition for inter partes review has been filed, but prior to an institution decision being issued. While granting a stay in the case pending denial or completion of the inter partes r