Network-1 Technologies, Inc., v. Hewlett-Packard Co., 2018-2338, 2018-2339, 2018-2395, 2018-2396 (Fed. Cir. Sep. 24, 2020). Before: Prost, Newman, and Bryson.

Network-1 sued several defendants, including HP, for infringement of the U.S. Patent No. 6,218,930 in the US District Court for the Eastern District of Texas. After Network-1 filed its complaint, another defendant, Avaya, petitioned the PTAB for IPR of the '930 patent with grounds based on prior art references to Matsuno and De Nicolo. The Board instituted Avaya's petition.

Following institution, HP filed a motion to join Avaya's instituted IPR. The Board granted HP's joinder motion. HP could not have filed its own IPR at this point, because more than one year had passed since the district court complaint had been served on HP.  Although 35 U.S.C. § 315(b) sets a one-year time bar to filing an IPR petition, it also provides an exception for joinder motions. Thus, even though more than one year had passed since the district court complaint had been served when HP filed its motion, HP was able to join Avaya's instituted IPR.

After the Board ultimately found the challenged claims not unpatentable in its final written decision on Avaya's IPR, the district court trial went forward. At the district court trial, in relevant part, HP argued that the asserted claims were rendered obvious by patents and printed publications to Fisher, Woodmas, and Chang. The jury agreed and rendered an invalidity verdict in HP's favor.

Following the jury's invalidity verdict, Network-1 filed a motion for JMOL and motion for a new trial related to validity. The district court granted the JMOL but did not rule on the motion for a new trial. The District Court concluded that because of HP's joinder to Avaya's IPR, HP was estopped under 35 U.S.C. § 315(e) from raising the Fisher, Woodmas, and Chang prior art references, which it determined "reasonably could have been raised" in the IPR. HP appealed the district court's grant of JMOL.
On appeal, the Federal Circuit held that HP was not estopped from raising a district court invalidity defense based on the Fisher, Woodmas, and Chang prior art references. The Federal Circuit reasoned that although 35 U.S.C. § 315 (e) estops certain invalidity grounds that an IPR petitioner may bring in a subsequent district court trial, the IPR petitioner is only estopped on the grounds that it "raised or reasonably could have raised" in the IPR. But, as the Federal Circuit has previously held, the joinder provision does not allow a joining party, like HP, to bring any new grounds. A joining party, therefore, could not have "reasonably . raised" any grounds that were not already part of the IPR. Because a joining party cannot bring grounds other than those already instituted, the joining party is not estopped from raising grounds that were not raised in the IPR.

HP was, thus, not estopped from raising invalidity challenges on any grounds other than the Matsuno and De Nicolo prior art references at issue in the Avaya IPR that HP joined. That meant that HP was not estopped from challenging the asserted claims of the '930 patent based on the Fisher, Woodmas, and Chang references that were the basis for the jury's invalidity verdict. The Federal Circuit, therefore, vacated the district court's JMOL decision on validity. Nonetheless, because the District Court did not rule on Network-1's motion for a new trial with respect to validity, the Federal Circuit remanded the case back to the District Court for a decision on the new trial motion in the first instance.

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