Post-IPR Estoppel: Printed Publication vs. Actual Product Shown in the Publication

In re DMF, Inc. (Fed. Cir. 2021)

The court has denied DMF’s mandamus petition on an interesting post-IPR estoppel question.

DMF sued ELCO Lighting in 2018 for infringing DMF’s U.S. Patent No. 9,964,266.  As is usual these days, ELCO turned-around and filed an inter partes review petition — challenging the patent’s validity based upon a 2011 product catalog (printed publication) that had featured the Hatteras lighting product.  Although the PTAB instituted the IPR, it eventually sided with the patentee in holding that the prior printed publication wasn’t enough render the invention obvious.

Back in the district court, ELCO is seeking again to invalidate the claims based upon the Hattaras lighting product.  The difference now is that they are not simply raising the defense based upon the printed publication but rather are presenting the actual product as prior art based upon it being “in public use, on sale, or otherwise available to the public.”  35 U.S.C. 102.

Section 315(e)(2) estops an IPR petitioner from later asserting in litigation that a “claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”  IPRs are limited only to arguments based upon patent documents and printed publications — and so the actual prior product could not have been used as the basis for the IPR.  The district court went a bit further and found that there must be “a substantive difference” between the publication and the physical product that is “germane to the invalidity dispute.”

Here, the district court found substantive, germane differences.  In particular, the failing of the prior art reference was that the elements of the invention required cobbling together images from different products in the catalog.  The PTAB found that mix-and-match approach improper.  In the district court litigation, ELCO is seeking to use the single product to show each element.

On Mandamus, the Federal Circuit did not delve into whether the substantive-germane legal standard was correct or whether the facts had been properly decided — but did find them not “clearly and indisputably erroneous.”  Further, the court found that mandamus was not necessary — the patentee should wait until final judgment and appeal. “DMF has not shown that a post-judgment appeal is an inadequate remedy for asserting a statutory estoppel argument.”

10 thoughts on “Post-IPR Estoppel: Printed Publication vs. Actual Product Shown in the Publication

  1. 4

    Three things actually.

    Is it me or is mandamus on the rise at CAFC lately? You always had it for transfer motions of course, but now it seems to be more prevalent for other things too. For example, this case and the other recent one for the arbitration issue. Are people trying to get CAFC in on the shadow docket (I know mandamus is sort of different, but it still has some of the same feel to it) craze that’s all the rage at SCOTUS and to some extent other circuits too?

    1. 4.1

      Having several granted [instead of denied as usual] mandamus decisions lately, re one judge in Waco WDTX, re venue transfers, is not normal, and seems unlikely to continue even from there?

      1. 4.1.1

        I agree that it seems like the trend specifically for WDTX can’t continue like this indefinitely; it’s not sustainable, so something has to change.

        As for the broader mandamus popularity, I wonder if that’s more of a permanent feature.

  2. 3

    Two things. One, the OP description is a little vague. It could be clearer in stating that the patentee/plaintiff here (DMF) sought to use mandamus to reverse the district court’s legal conclusion that the alleged infringer/defendant (ELCO) is not estopped from asserting the product itself as prior art despite having petitioned for IPR with grounds based on a manufacturer’s catalog description of that same product.

    Two, seeking mandamus on this kind of issue seems like a real Hail Mary type effort. I guess the prior art product must be pretty killer?

    1. 3.1

      Yes, “Hail Mary type effort” is what you often get when GCs and in-house PC’s fail to supervise O.C. billings.

      1. 3.1.1

        To be fair [if still curmudgeonry] there are also situations in which inside and outside counsel and/or client management have mutual personal interests in deferring the death of a losing case* as long as possible.
        *especially a lawsuit that could have been predicted in advance as losing with a better pre-suit prior art search.

        1. 3.1.1.1

          Good points, thanks!

  3. 2

    “This is just a verbal quibble over the “as is usual,””

    The same used to be said for defendants responding with allegations of inequitable conduct by the patentee.

    1. 2.1

      Yes indeed, defense allegations of inequitable conduct are now far less common than they were at one time in the past.

  4. 1

    Re: “DMF sued ELCO Lighting in 2018 for infringing DMF’s U.S. Patent No. 9,964,266. As is usual these days, ELCO turned-around and filed an inter partes review petition..” This is just a verbal quibble over the “as is usual,” since my recollection is that only about 1/4 of patent suits draw an IPR response, and in particular not among those lawsuits more promptly and easily ended by an Alice-type 12(b)6) unpatentable subject matter motion.
    As for the issue here, yes, actual prior art products typically are more completely and accurate detailed than any patent or publication drawings thereof which can be used in an IPR. [Old product “blueprints” or CAD-CAM drawings are not typically 102 or 103 “publications.”] Furthermore, I have known and have been told more than once by well-experienced patent litigation attorneys that juries are far more impressed by actual prior art products, especially those of the defendants, and especially if the old product still works.

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