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ARTICLE · 08 FEBRUARY 2024

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

Jones Day
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In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds...

United StatesIntellectual Property
Thomas Ritchie
Thomas Ritchie
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In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review (PGR) petition). No. 18 Civ. 05290 (CM) (S.D.N.Y. Dec. 21, 2023). To support its position, GeigTech presented the court with two keyword search strings showing that each of the prior art references could be identified using Google Patents.

As we previously discussed (here), IPR/PGR estoppel applies to grounds "a skilled searcher conducting a diligent search reasonably could have been expected to discover, as these are grounds that the petitioner 'reasonably could have raised' in its petition." Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 1298 (Fed. Cir. 2023). Establishing estoppel under this standard requires the patent owner to put forth (1) evidence of a "search string and search source that would identify

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