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State of the Art of System Allowed at Trial Despite Arguments Related Printed Publications Could Have Been Relied on in Parallel IPR Proceedings | Akin Gump Strauss Hauer & Feld LLP

In a recent order, the Eastern District of Texas refused to bar a defendant from relying on prior art system references despite the patentee’s argument that similar printed publications could have been relied upon in previous documents. inter partes requests for review (DPI).

After Plaintiff United Services Automobile Association (USAA) sued Defendant PNC Bank NA for patent infringement, PNC filed IPR claims against each of the six patents in dispute, three of which were instituted by the Trial Board. patent litigation and appeal. In each of these motions, the PNC stipulated that “if this IPR is instituted, it will not advance the grounds which are or could reasonably have been raised in this IPR in the proceeding pending in the district court.”

In the parallel proceeding in the district court, the PNC asserted prior art system references, which were linked to printed publications describing the system. In response, the USAA filed a motion in the limit to prevent PNC from asserting these system references on the grounds that the related printed publications could have been relied upon in IPR proceedings.

The court pointed out that the district courts are divided on whether a party is barred from asserting a reference to the system when there is a related print publication. The court, however, declined to prevent PNC from raising invalidity defenses based on these system references because it was “unclear on the[e] save that related publications describe in detail[d] all relevant features of the claimed systems.

Practical tip: Although prior art systems cannot be raised during IPR proceedings, some district courts have struggled to determine whether a party should be prevented from asserting a system reference where there is a related print publication that may have arisen in the IPR proceedings. Disputing parties should recognize that estoppel may not prevent assertion of system credentials, particularly if the accused infringer can demonstrate that the system possesses features not disclosed in related prior art publications.

United Services Automobile Association v PNC Bank, NAno. 2-20-cv-00319 (ED Tex. April 28, 2022) (Roy S. Payne).