In its recent decision in Ingenico Inc. v. IOENGINE, LLC, the Federal Circuit affirmed the district court's decision to allow Ingenico to introduce certain prior art at trial, finding that inter partes review (IPR) estoppel did not preclude the prior art on which Ingenico relied. Ingenico Inc. et al. v. IOENGINE, LLC, No. 23-1367, slip op. (Fed. Cir. May 7, 2025) (Ingenico). This is an important decision that provides guidance on the scope of estoppel and addresses questions that have split district courts, including as to the scope of estoppel related to product or system prior art.
Case Background and Lower Court Decision
IOENGINE originally filed an action in the District of Delaware alleging that PayPal's products infringed certain patents. IOENGINE, LLC v. PayPal Holdings, Inc., No. 18-452-WCB (D. Del.). Ingenico, as the supplier of PayPal's accused products, then filed a declaratory judgment action against IOENGINE. Ingenico Inc. v. IOENGINE LLC, No. 18-826-WCB (D. Del.). Before trial, Ingenico filed IPR petitions challenging IOENGINE's asserted patents, resulting in final written decisions holding that most of the claims of two IOENGINE patents were unpatentable. Ingenico Inc. v. IOENGINE, LLC, IPR2019-00879 (PTAB Mar. 25, 2019); Ingenico Inc. v. IOENGINE, LLC, IPR2019-00929 (PTAB Apr. 4, 2019).
At summary judgment, IOENGINE moved to preclude Ingenico from relying on "documentation related to DiskOnKey Upgrade software" under 35 U.S.C. ' 315(e)(2) as prior art that Ingenico reasonably could have raised during the IPR proceedings. Ingenico, 3. The district court ruled that "Ingenico will be estopped from relying on those documents [to prove invalidity] except to the extent . . . that they form part of a substantively different combination of references that could not reasonably have been raised in the IPRs." Id.
At trial, Ingenico presented invalidity arguments relying on a product prior art USB device known as DiskOnKey, which was offered with software including a Firmware Upgrader and had capabilities described in a Software Development Kit. Id. In particular, Ingenico argued that the DiskOnKey USB device anticipated or rendered obvious the asserted claims because the device was either "on sale" or "in public use" under 35 U.S.C. ' 102(b) (pre-AIA) or "known or used by others . . . before the date of the invention" under 35 U.S.C. ' 102(a) (pre-AIA). Id. The jury returned a verdict that the claims were invalid as anticipated and obvious. Id.
...
