A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so narrow after all. The decision adds to the growing confusion over the scope of the estoppel provision Congress wrote into the AIA.
On December 20, 2013, Parallel Networks Licensing, LLC (“Parallel Networks”) sued International Business Machines Corporation (“IBM”) in the Delaware district court for infringement of U.S. Patent Nos. 5,894,554 (“the ‘554 Patent”) and 6,415,335 (“the ‘335 Patent”). Parallel Networks Licensing, LLC v. International Bus. Machs. Corp., Case No. 13-2072 (D. Del.). IBM answered and counterclaimed seeking declaratory judgments of non-infringement and invalidity based on anticipation and obviousness. Continue Reading