In fairly big news for patent litigants in the US, the Federal Circuit recently clarified that you can rely on prior art in the patent litigation, even if you have relied on previously in an Inter Partes Review (IPR). The proviso is that you can only do so to support a ground of invalidity that is not available in an IPR.
This is big news because previously there were split decisions as to whether you were stopped (Estopped) from using the same prior art at all. In Judge Hughes’ words:
“IPR estoppel does not preclude a petitioner from relying on the same patents and printed publications as evidence in asserting a ground that could not be raised during the IPR, such as that the claimed invention was known or used by others, on sale, or in public use.”
Typical grounds where prior art may be reused could include prior public use or sale.
The case is: Ingenico Inc. v. IOENGINE, LLC, No. 23-1367 (Fed. Cir. May 7, 2025)
Here’s some great commentary at: PatentlyO, JDSupra, A&O Shearman, IPWatchDog,