October 15, 2019

October 15, 2019

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October 14, 2019

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District Court Sheds Light on Scope of IPR Estoppel

One area of estoppel arising from an unsuccessful AIA petition that remains poorly understood relates to prior art that is described both in a printed publication or patent and also was in use by others, such as to create prior use, prior sale, or other non-printed types of prior art. In Polaris Industries Inc. v. Arctic Cat Inc., the District Court of Minnesota denied-in-part plaintiff’s motion for summary judgment that defendant should be estopped from asserting three invalidity grounds, which each included a prior art product, specifically physical vehicles, even though aspects of the physical vehicles were described in a printed publication or patent.1 In so denying, the court held that the combinations could not have reasonably been raised in a previous Inter Partes Review (“IPR”) proceeding, because prior art in IPR proceedings is limited to “patents or printed publications.”2

Polaris alleged that Arctic Cat infringed certain claims of Polaris’ ‘501 Patent relating to continuous variable transmissions.3 In response, Arctic Cat filed an IPR petition with the Patent Trial and Appeal Board and asserted invalidity of certain ‘501 patent claims based on grounds of obviousness.4 Arctic Cat’s petition was ultimately unsuccessful, although it was instituted on a number of grounds relating to printed publications.  Returning to the District Court case, Arctic Cat asserted invalidity as to most of the claims of the ‘501 patent, on the grounds of seven specific combinations of prior art that were not asserted in Arctic Cat’s IPR petition.  While most of the combinations included prior art patents and printed publications, three of the grounds also included physical vehicles, such as the Pontiac Fiero.5

Polaris then moved for summary judgment, arguing that all of Arctic Cat’s physical vehicle prior art could have been reasonably raised during the IPR and that allowing Arctic Cat to point to physical products, rather than the printed materials describing the products, would allow Arctic Cat to end-run the intended scope of IPR estoppel.6The court responded that no such rule has been recognized by any court.7 The court further recognized that other courts have held that products embodying patents or printed publications are not subject to §315(e)(2) estoppel.8 The court thus held that only patents or printed publications can serve as grounds for an obviousness combination in an IPR, as recited by 35 U.S.C. §311(b), such that Arctic Cat could not have reasonably raised the obviousness combinations that included physical vehicles.

This is a preliminary decision, and so practitioners will need to continue monitoring developments in this area to see if the points of decision hold up on appeal and in subsequent decisions, but it does illuminate a potential pathway for petitioners who are ultimately unsuccessful in an AIA petition. One issue to be reviewed carefully in situations like this is whether the non-printed form of prior art would satisfy elements of the claims that are not taught or suggested in the printed form of prior art.


Polaris Industries Inc. v. Arctic Cat Inc., No. 2015-4475, 2019 WL 3824255 (D. Minn. Aug. 15, 2019).

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About this Author

Sasha Vujcic Patent Law Clerk Foley Lardner
Patent Law Clerk

Sasha Vujcic is a patent law clerk with Foley & Lardner LLP. Sasha has experience writing and prosecuting patent applications in the fields of semiconductor circuits and devices, computer networks, memory systems, wireless communication systems, virtual computing systems, data storage systems, log-structured file systems, HVAC equipment, unmanned vehicles, and authentication techniques, among others.

Prior to joining Foley, Sasha gained over nine years of engineering experience in various semiconductor companies, such as Qualcomm, Mediatek, and Unisoc Communications. Sasha’s...

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Stephen B. Maebius Foley Lardner Intellectual Property Lawyer
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Stephen (Steve) B. Maebius is a partner and intellectual property lawyer with Foley & Lardner LLP. He has led teams within Foley handling a variety of different kinds of IP work, including IP due diligence reviews, infringement and validity opinions, international portfolio management, licensing, litigation with parallel inter partes reviews, reexaminations and interferences, and pharmaceutical patent term extensions. Two IP transactions in which Mr. Maebius has participated were awarded "Deal of Distinction" status by the Licensing Executives Society. He is a former member of the firm’s Management Committee and former chair of the Intellectual Property Department. Prior to becoming a lawyer, he was a patent examiner in the Biotechnology Group of the U.S. Patent & Trademark Office.

Representative Matters

  • Lead counsel in successful defense of 6 Inter Partes Reviews filed by generic petitioners against a family of Orange Book-listed pharmaceutical patents covering a $1B controlled release product with parallel Hatch-Waxman litigation (IPR2013-00368, IPR2013-00371, and IPR2013-00372 - instituted but all claims found patentable in final written decision; IPR2015-01777, IPR2015-01778, and IPR2015-01782 - not instituted)
  • Prosecuted product-by-process patent listed in Orange Book that was upheld as valid and infringed in United Therapeutics v. Sandoz, 2014 U.S. Dist. LEXIS 121573 (D.N.J. Aug. 29, 2014)
  • Co-counsel for successful petitioner in Inter Partes Review filed against patent asserted in litigation against LED client (IPR2012-00005; decision affirmed on appeal)
  • Takeda Pharmaceutical Co. Ltd. v. John Doll (Fed. Cir. 2009) – co-counsel in precedential 2-1 decision remanding a double patenting rejection arising from patent reexamination (all claims confirmed to be patentable upon remand to the Patent Office)
  • Goldenberg & Immunomedics v. Cytogen & C.R. Bard (Fed. Cir. 2004) – co-counsel on appeal in reversal of summary judgment in client's favor in precedential 2-1 decision on doctrine of equivalents issue
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