Federal Circuit Reminds Lower Court That A Party That Joins An Instituted IPR Proceeding Cannot Introduce New Grounds To The Proceeding

In Network-1 Technologies, Inc. v. Hewlett-Packard Company, Nos. 2018-2338, et al. (Fed. Cir. Sept. 24, 2020), the Federal Circuit overturned a lower court’s ruling and held that a party that joins an IPR proceeding is not statutorily estopped from raising invalidity in a related litigation on grounds different than those raised in the proceeding.  Relying on the IPR joinder provisions of 35 U.S.C. §315(c), HP joined an instituted IPR proceeding challenging claims asserted in the litigation.  At trial, the jury found that the asserted claims were invalid based on grounds not raised in the IPR proceeding.  Post-trial, the district court overturned the jury’s invalidity verdict on the basis that HP was estopped under § 315(e)(2) from challenging validity on grounds it could have reasonably raised during the IPR proceeding.  The Federal Circuit agreed with HP that the lower court misapplied § 315(e)(2).  The Court therefore vacated the lower courts’ JMOL decision on estoppel and remanded the case, reminding the lower court that under § 315(c) “the joinder provision does not permit a joining party to bring into the proceeding new grounds that were not already instituted.” 

The case highlights a potential tactical advantage with respect to the joinder provisions under the IPR statute.  Lerner David has significant experience in achieving successful outcomes for its clients as both IPR petitioners and respondents.

The full opinion is accessible via http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-2338.OPINION.9-24-2020_1658534.pdf