United States District Court, D. Delaware
CONNOLLY, UNITEITCTATES DISTRICT JUDGE
this patent case, Plaintiffs accuse Defendants of infringing
multiple patents. Defendants successfully petitioned the
United States Patent Trial and Appeal Board (PTAB) to
institute an inter partes review (IPR) of one of
these patents, U.S. Patent No. 7, 520, 662 (the "#662
patent"). In the IPR, Defendants argued that the #662
patent was invalid for obviousness based on disclosures in
the prior art. Defendants lost. Defendants then appealed this
loss to the Federal Circuit and lost again. See Hamilton
Beach Brands, Inc. v. freal Foods, LLC, 908 F.3d 1328,
1342-43 (Fed. Cir. 2018).
Plaintiffs have now filed a motion in limine
"to preclude Defendants from asserting at trial that
Claim 21 of [the #662 patent] is 'invalid on any ground
that the petitioner raised or reasonably could have
raised' during the [IPR] of that patent  under 35
U.S.C. § 315(e)(2)." D.I. 172. For the reasons that
follow, I will grant in part and deny in part Plaintiffs'
Plaintiffs argue that Defendants are estopped from basing an
invalidity argument on certain prior art combinations,
because Defendants could have raised the prior art
combinations in the IPR proceedings instituted for the #662
first prior art reference at issue is Japanese Utility Model
Application, JP H04-136787 Ul (the "Sato
reference"). Plaintiffs argue that Defendants are
estopped from basing any invalidity argument on any prior art
combination involving the Sato reference. It is undisputed
that Defendants did not learn about the Sato reference until
two months after the filing of the IPR for the #662 patent.
Therefore, the Court's estoppel inquiry is limited to
whether the Sato reference could reasonably have been
discovered by a "skilled searcher conducting a diligent
search." Parallel Networks Licensing, LLC v. IBM
Corp., 2017 WL 1045912, at *11 (D. Del. Feb. 22, 2017)
(internal quotation marks and citation omitted).
is undisputed that Plaintiffs bear the burden of establishing
estoppel. The only "evidence" offered by Plaintiffs
in support of their motion is the fact that Defendants
uncovered Sato two months after filing the IPR for the #662
contrast, Defendants submitted sworn declarations of two
highly skilled patent searchers who performed diligent
searches for prior art for the #662 patent in 2014 and 2015
and were unable to locate the Sato reference. See
generally D.I. 194-2; D.I. 194-3. In one of the
declarations, Lone Hartung Nielsen, Managing Director of the
Nordic Patent Institute (NPI), affirmed that the NPI
conducted a prior art search for the #662 patent in August
2015 across various national and international patent
databases including databases specifically geared toward the
"scientific and technological aspects of the processing
and manufacturing of food products" yet failed to
uncover the Sato reference. See generally D.I.
declaration of Dominic M. DeMarco, Managing Director of
DeMarco Intellectual Property, LLC (DeMarco IP), similarly
documents DeMarco IP's failure to uncover the Sato
reference in a prior art search conducted in December 2014.
See generally D.I. 194-3. DeMarco explained that
because "Sato is a Japanese Utility Model... that did
not include any translation of the abstract, specification,
or claims, ... it is not reasonable to expect a skilled
searcher to find [it] even through the most diligent search
because commonly used prior art search tools will not be able
to correlate the search terms with Sato in global patent
databases." Id. at 4-5, ¶ 15. DeMarco also
added that "[e]ven having the exact reference number for
Sato, it cannot be found in any PTO internal prior art
database." Id. at 5, ¶ 16.
Nielson and DeMarco declarations rebut any suggestion that
the Sato reference could reasonably have been discovered by a
"skilled searcher conducting a diligent search."
Therefore, Defendants are not estopped from raising Sato as a
prior art reference.
find, however, that Defendants are estopped from raising the
combination of Admitted Prior Art (APA), Kelly, and Miller.
The PTAB instituted the IPR based upon the combination of
Nielson, Kelly, and Miller but did not institute on the
combination of APA, Kelly, and Miller, because it found that
latter combination redundant. Hamilton Beach never challenged
this non-institution decision at the PTAB; nor did Hamilton
Beach request a remand at the Federal Circuit to have the
PTAB reinstitute the IPR with the APA, Kelly, and Miller
combination in light of the Supreme Court's holding in
SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018)
that the PTAB must institute an IPR on all petitioned
grounds. SAS Institute was issued during the
pendency of Hamilton Beach's appeal before the Federal
Circuit, and therefore, Hamilton Beach could have sought a
remand. See, e.g., BioDelivery Sci. Int'l, Inc. v.
Aquestive Therap., Inc., 898 F.3d 1205 (Fed. Cir. 2018);
Palo Alto Networks, Inc. v. Finjan, Inc., 2018 WL
6040843, at *3 (Fed. Cir. Nov. 19, 2018). Hamilton
Beach's failure to request such relief precludes it from
asserting the APA, Kelly, and Miller combination at trial,
because it could have raised this combination in a
post-remand IPR if it had sought a remand. See SiOnyx,
LLC v. Hamamatsu Phototonics K.K., 330 F.Supp.3d 574,
601 (D. Mass. 2018).
on this Tenth day of April in 2019, IT IS HEREBY
ORDERED that "Plaintiffs' Motion in
Limine to Preclude Prior Art Under 35 U.S.C. §
315(e)" (D.I. 172) is GRANTED IN PART AND DENIED
Plaintiffs' motion is DENIED with
respect to the Sato reference.
Plaintiffs' motion is GRANTED with
respect to the combination of APA, Kelly, and Miller.
Defendants are precluded from raising the combination of APA,
Kelly, and Miller to argue that the #662 patent is invalid.