System Prior Art Allowed At Trial Despite Arguments That Related Printed Publications Could Have Been Asserted In Parallel IPR Proceedings

In a recent order, the Eastern District of Texas declined to preclude a defendant from raising prior art system references despite patentee's argument that similar printed publications could have been raised in earlier inter partes review (IPR) petitions.

After plaintiff United Services Automobile Association (USAA) sued defendant PNC Bank N.A. for patent infringement, PNC filed IPR petitions against each of the six patents-in-suit, of which three were instituted by the Patent Trial and Appeal Board. In each of these petitions, PNC stipulated that “if this IPR is instituted, it will not advance the grounds that are raised or reasonably could have been raised in this IPR in the co-pending district court proceeding.”