Case: 23-1367 Document: 58 Page: 1 Filed: 05/07/2025
United States Court of Appeals
for the Federal Circuit
______________________
INGENICO INC.,
Plaintiff/Counterclaim Defendant-Appellee
INGENICO CORP., INGENICO GROUP S.A.,
Counterclaim Defendants-Appellees
v.
IOENGINE, LLC,
Defendant/Counter-Claimant-Appellant
______________________
2023-1367
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-00826-WCB, Circuit
Judge William C. Bryson.
______________________
Decided: May 7, 2025
______________________
KERRY L. TIMBERS, Sunstein LLP, Boston, MA, argued
for plaintiff/counterclaim defendant-appellee and counterclaim defendants-appellees. Also represented by KEVIN R.
MOSIER.
NOAH LEIBOWITZ, Dechert LLP, New York, NY, argued
for defendant/counter-claimant-appellant. Also represented by GREGORY CHUEBON; MICHAEL A. FISHER, Philadelphia, PA; MICHAEL JOSHI, San Francisco, CA.
Case: 23-1367 Document: 58 Page: 2 Filed: 05/07/2025
2 INGENICO INC. v. IOENGINE, LLC
______________________
Before DYK, PROST, and HUGHES, Circuit Judges.
HUGHES, Circuit Judge.
This is an appeal from the judgment issued by the
United States District Court for the District of Delaware
pursuant to a jury verdict and the subsequent denial of motion for judgment as a matter of law and motion for a new
trial. Judgment, Ingenico, Inc. v. IOENGINE, LLC, No. 18-
826-WCB (D. Del. July 25, 2022), ECF No. 506.
IOENGINE appeals a jury verdict that found claim 3 of
U.S. Patent No. 9,059,969 and claims 56, 90, 101, 105, and
124 of
U.S. Patent No. 9,774,703 invalid as anticipated and
rendered obvious by the prior art. In the alternative,
IOENGINE appeals the district court’s jury instructions
and decision to allow Ingenico to introduce prior art at
trial. Because substantial evidence supports the jury verdict, and because the district court did not abuse its discretion in denying a new trial, we affirm.
I
The patents-at-issue are directed to a portable device,
such as a USB thumb drive, which includes a processor
that causes communications to be sent to a network server
in response to user interaction with an interface on a terminal. ’969 patent, Abstract; ’703 patent, Abstract.
On March 23, 2018, IOENGINE filed an action in the
District of Delaware alleging PayPal Holdings, Inc.’s accused products infringed various patents, a subset of which
are at issue in this appeal. Complaint, IOENGINE, LLC v.
PayPal Holdings, Inc., No. 18-452-WCB (D. Del. Mar. 23,
2018), ECF No. 1. Because it supplied PayPal’s accused
products, Ingenico filed a declaratory judgment action
against IOENGINE. Complaint, Ingenico Inc. v.
IOENGINE LLC, No. 18-826-WCB (D. Del. June 1, 2018),
ECF No. 1.
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INGENICO INC. v. IOENGINE, LLC 3
Prior to trial, Ingenico filed IPR petitions challenging
IOENGINE’s asserted patents, which resulted in final
written decisions that held most of the challenged claims
of the ’969 and ’703 patents unpatentable. Ingenico Inc. v.
IOENGINE, LLC, IPR2019-00879 (PTAB Mar. 25, 2019);
Ingenico Inc. v. IOENGINE, LLC, IPR2019-00929 (PTAB
Apr. 4, 2019). At summary judgment, IOENGINE moved to
preclude Ingenico from relying on “documentation related
to DiskOnKey Upgrade software” under 35 U.S.C.
§ 315(e)(2) because Ingenico reasonably could have been
expected to raise it during the IPR proceedings. J.A. 115
n.21. The district court ruled that “Ingenico will be estopped from relying on those documents [to prove invalidity] except to the extent . . . that they form part of a
substantively different combination of references that
could not reasonably have been raised in the IPRs.”
J.A. 115.
A five-day jury trial concerning Ingenico’s infringement of the asserted claims began on July 11, 2022. At
trial, Ingenico introduced evidence of a prior art USB device known as the DiskOnKey (DiskOnKey Device). The
DiskOnKey Device was manufactured and sold in the early
2000s by M-Systems Flash Disk Pioneers Ltd. The DiskOnKey Device was offered with various software applications, including a Firmware Upgrader, and was equipped
with capabilities described in a Software Development Kit
(together the DiskOnKey System). Ingenico argued that
the DiskOnKey System invalidated the asserted claims as
anticipated or obvious because it was either “on sale” or “in
public use” under 35 U.S.C. § 102(b) (pre-AIA), or “known
or used by others . . . before the date of the invention” under
35 U.S.C. § 102(a) (pre-AIA).
In relevant part, the jury returned a general verdict
finding the claims-at-issue in this appeal were infringed,
but invalid as anticipated and obvious. The district court
subsequently entered judgment, and IOENGINE timely
filed a renewed motion for JMOL of no invalidity under
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4 INGENICO INC. v. IOENGINE, LLC
Federal Rule of Civil Procedure 50(b) or, alternatively, for
a new trial under Federal Rule of Civil Procedure 59(a).
The district court denied IOENGINE’s motions. This appeal followed.
II
On appeal, IOENGINE does not challenge the jury’s
finding that the DiskOnKey System invalidates the claims-at-issue as anticipated or obvious if the DiskOnKey System
is prior art. Instead, IOENGINE challenges the jury’s implicit finding that the Firmware Upgrader portion of the
DiskOnKey System was either “on sale” or “in public use”
under 35 U.S.C. § 102(b) (pre-AIA), or “known or used by
others . . . before the invention” under
35 U.S.C. § 102(a)
(pre-AIA).
Alternatively, IOENGINE argues it is entitled to a new
trial because it alleges the district court provided various
legally erroneous jury instructions and failed to instruct on
the presumption of validity, and because IPR estoppel
should have precluded Ingenico from introducing the Firmware Upgrader at trial.
A
We review a district court’s denial of JMOL under the
regional circuit law. Summit Tech., Inc. v. Nidek Co.,
363 F.3d 1219, 1223 (Fed. Cir. 2004). The Third Circuit
standard is “whether there is evidence upon which a reasonable jury could properly have found its verdict.”
TransWeb, LLC v. 3M Innovative Props. Co.,
812 F.3d
1295, 1301 (Fed. Cir. 2016) (quoting Gomez v. Allegheny
Health Servs.,
71 F.3d 1079, 1083 (3d Cir. 1995)). JMOL
“‘should be granted only if, viewing the evidence in the light
most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find’
for the nonmovant.”
Id. (quoting Lightning Lube, Inc. v.
Witco Corp.,
4 F.3d 1153, 1166 (3d Cir. 1993)).
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INGENICO INC. v. IOENGINE, LLC 5
Under the pre-AIA public use bar, “[a] person shall be
entitled to a patent unless . . . the invention was . . . in public use . . . in this country, more than one year prior to the
date of the application for patent in the United States.”
35 U.S.C. § 102(b) (pre-AIA). “The public use bar is triggered ‘where, before the critical date, the invention is
[(1)] in public use and [(2)] ready for patenting.’” Minerva
Surgical, Inc. v. Hologic, Inc.,
59 F.4th 1371, 1377
(Fed. Cir. 2023) (quoting Polara Eng’g Inc v. Campbell Co.,
894 F.3d 1339, 1348 (Fed. Cir. 2018)) (alterations in original).
On appeal, IOENGINE disputes whether the Firmware Upgrader portion of the DiskOnKey System was “in
public use.” The “in public use” element of the public use
bar is met if the invention “‘was accessible to the public or
was commercially exploited’ by the inventor.” Id. (quoting
Delano Farms Co. v. Cal. Table Grape Comm’n,
778 F.3d
1243, 1247 (Fed. Cir. 2015)).
Here, substantial evidence supports finding that the
Firmware Upgrader was accessible to the public. At trial,
Ingenico introduced a July 2002 email that M-Systems sent
to its employees, including those in California, announcing
the launch of the Firmware Upgrader. This email was accompanied by the DiskOnKey “Readme” user guide, which
disclosed important details about the Firmware Upgrader’s
functionality. The email encouraged the employees to “pass
this information along to your partners, customers, reps
and distributors, and indicated that the application and
user guide could “be downloaded from [the DiskOnKey]
web site . . . starting from [July 10, 2002].” J.A. 15 (alteration in original) (citation omitted).
Ingenico also introduced a July 11, 2002, press release
issued by M-Systems in Fremont, California. The press release promoted the launch of the Firmware Upgrader, explained the application’s benefits, and touted the Firmware
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6 INGENICO INC. v. IOENGINE, LLC
Upgrader as a major differentiator from other storage devices. See J.A. 11041.
Ingenico further introduced an archived M-Systems
website page from 2002, from which the Firmware Upgrader was available for download. J.A. 11305. Ingenico’s
expert testified that “there would be . . . many people that
would think they need to upgrade the firmware and would
be downloading the firmware [upgrade application]” and
the Readme file from the M-Systems website. J.A. 10177,
1142:15–25.
IOENGINE does not dispute this evidence, but contends it is insufficient to establish public use because it
does not prove “actual use by someone at some point.” Appellant’s Opening Br. 32 (emphasis in original) (quoting
Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M), 303 F.3d
1294, 1307 (Fed. Cir. 2002)). IOENGINE argues “the only
evidence here is that the Firmware Upgrader was available
for download, not that anyone in this country (or anywhere)
ever actually downloaded it and used it.” Id. at 33 (emphasis omitted).
It is true that public use requires actual use. But circumstantial evidence is not second-class to direct evidence.
See Medtronic, Inc. v. Teleflex Innovations S.A.R.L.,
70 F.4th 1331, 1340 (Fed. Cir. 2023) (“Nor is circumstantial evidence second-class to direct evidence.”). “Circumstantial evidence is not only sufficient, but may also be
more certain, satisfying and persuasive than direct evidence.”
Id. (quoting Michalic v. Cleveland Tankers, Inc.,
364 U.S. 325, 330 (1960)). Thus, “[e]ither direct or circumstantial evidence corroborating public use may be sufficient for a party to meet its burden of proof.” TransWeb,
LLC v. 3M Innovative Props. Co.,
16 F. Supp. 3d 385, 393
(D.N.J. 2014), aff’d,
812 F.3d 1295 (Fed. Cir. 2016). Here,
there is substantial circumstantial evidence that would allow a reasonable jury to conclude that a user downloaded
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INGENICO INC. v. IOENGINE, LLC 7
and actually used the Firmware Upgrader with the DiskOnKey Device.
IOENGINE relies on 3M to argue that there is insufficient evidence of public use. In 3M, the defendant sent samples of the accused product as a two-part composition that
needed to be mixed prior to use. 303 F.3d at 1307. The asserted claims also required applying the mixed composition
to a “signal transmission device.”
Id. But “absent from the
record [was] testimony or evidence about what disclosure
was actually sent with the samples” that would allow a person of ordinary skill in the art “to make the claimed invention.”
Id. at 1306. The failure of proof, therefore, hinged on
a lack of evidence that the product was used in a way that
met or disclosed the claim requirements.
Here, M-Systems’ employees were encouraged to inform their partners, customers, reps, and distributors
about the Firmware Upgrader. Those customers had access
to a user guide that informed them about the beneficial
functionality of the Firmware Upgrader. In contrast to 3M,
where there was a lack of evidence that the products were
used in a way that met the claim requirements, customers
were encouraged to download the Firmware Upgrader and
were instructed on how to use it. And it is not in dispute
that a single download of the Firmware Upgrader results
in a system that meets the patents-at-issue’s claim requirements. Thus, there is substantial evidence to support the
jury’s finding that the DiskOnKey System, including the
Firmware Upgrader, was in public use.
The jury returned a general verdict finding the claims-at-issue in this appeal were invalid as anticipated and obvious. “A general jury verdict of invalidity should be upheld
if there was sufficient evidence to support any of the alternative theories of invalidity.” Cordance Corp. v. Amazon.com, Inc., 658 F.3d 1330, 1339 (Fed. Cir. 2011). Thus,
we need not reach whether substantial evidence supports
a jury verdict that the Firmware Upgrader was “on sale”
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8 INGENICO INC. v. IOENGINE, LLC
under
35 U.S.C. § 102(b) (pre-AIA), or “known or used by
others . . . before the invention” under
35 U.S.C. § 102(a)
(pre-AIA).
Because substantial evidence supports the jury’s verdict finding that the Firmware Upgrader was in public use,
we affirm.
B
In the alternative, IOENGINE argues it is entitled to a
new trial. “This court applies regional circuit law in reviewing the denial of . . . a motion for a new trial.” Seachange
Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1367–68 (Fed. Cir.
2005). “The Third Circuit reviews a denial of a motion for
new trial for abuse of discretion.”
Id. at 1368 (citing Rinehimer v. Cemcolift, Inc.,
292 F.3d 375, 383–84 (3d Cir.
2002)).
In contesting the district court’s denial of its motion for
a new trial, IOENGINE takes issue with (1) the district
court’s jury instructions, and (2) the district court’s decision to allow Ingenico to rely on prior art at trial. We address each issue in turn.
1
IOENGINE argues that the district court’s conception
and diligence, public use, and on sale instructions were erroneous, and that the district court also erroneously failed
to instruct the jury on the presumption of validity. “The
question of whether a jury instruction on an issue of patent
law is erroneous is a matter of Federal Circuit law and is
reviewed de novo.” Sulzer Textil A.G. v. Picanol N.V.,
358 F.3d 1356, 1363 (Fed. Cir. 2004). A jury verdict will be
set aside if the instructions were “legally erroneous” and
“the errors had prejudicial effect.”
Id. (quoting Advanced
Display Sys., Inc. v. Kent State Univ.,
212 F.3d 1272, 1282
(Fed. Cir. 2000)).
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INGENICO INC. v. IOENGINE, LLC 9
First, IOENGINE argues that the district court’s jury
instruction on conception and diligence incorrectly flipped
the legal burden. The district court instructed the jury that
“Ingenico has the burden of proving invalidity by clear and
convincing evidence, which as I’ve said before, means evidence that must leave you with a clear conviction or belief
that the claims in question are invalid.” J.A. 10372,
1293:9–12. The district court then instructed the jury that:
IOENGINE’s contention is that the date of the invention is no later than July 26th, 2001. Ingenico’s
contention is that the date of the invention was
March 23, 2004 . . . . [A]ny product or method that
was first publicly known or used in the United
States after [the invention] date wouldn’t be regarded as coming before the invention . . . . [A]ny
product or method that was known to or used by
others in this country before [the invention] date
would be prior art to the invention . . . . Whatever
the date of invention, Ingenico must prove by clear
and convincing evidence that the prior art item predated the claimed invention.
J.A. 10375–76, 1296:20–1297:16.
The district court’s instruction was based on Mahurkar
v. C.R. Bard, Inc., which specifies that the patent challenger “must persuade the trier of fact by clear and convincing evidence that the [purported prior art item] was
published prior to [the inventor’s] invention date.” 79 F.3d
1572, 1578 (Fed. Cir. 1996). The district court clearly and
consistently communicated to the jury that Ingenico had
the burden of proving the prior art predated the claimed
invention. We see no error in the district court’s instruction.
Second, IOENGINE argues that the district court’s
public use instruction was legally erroneous because the
district court failed to appreciate that different rules apply
to prior use by the inventor versus an unrelated third
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10 INGENICO INC. v. IOENGINE, LLC
party. IOENGINE claims the district court should have instructed the jury that “public use may be found when the
claimed features of the invention are discernible from a
prior art product that is accessible to the public.”
J.A. 10350, 1271:7–11. But “an invention is in public use if
it is shown to or used by an individual other than the inventor under no limitation, restriction, or obligation of confidentiality.” Am. Seating Co. v. USSC Grp., Inc., 514 F.3d
1262, 1267 (Fed. Cir. 2008) (citation omitted). That is what
the district court instructed the jury. See J.A. 10377,
1298:10–13 (“Now, public use may be found when a prior
art product is accessible to the public, commercially exploited, or otherwise used by the inventor or others with no
restrictions or obligations of secrecy.”). We see no error in
the district court’s instruction.
Third, IOENGINE argues that the district court’s on
sale instruction was legally erroneous. IOENGINE proposed the district court inform the jury that “only an offer
that the other party could make into a binding contract
simply by accepting it constitutes an offer for sale.”
J.A. 10351, 1272:16–19. Alternatively, IOENGINE proposed including that “an advertisement is not an offer for
sale.” J.A. 10351, 1272:19–20.
The district court did not include IOENGINE’s proposed instructions “[b]ecause the issue of validity turned
not on whether particular conduct constituted an offer for
sale, but instead on whether the DiskOnKey Devices sold
in the United States contained the [F]irmware
[U]pgrade[r] and the SDK capabilities.” J.A. 48. Additionally, the district court concluded that IOENGINE’s proposed instructions were more likely to confuse than help
the jury. J.A. 48–49. We see no error in the district court’s
instruction.
Lastly, IOENGINE argues that the district court erred
in refusing IOENGINE’s request to instruct the jury on the
presumption of validity. We have held that a district court
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INGENICO INC. v. IOENGINE, LLC 11
does not reversibly err by not instructing the jury on the
presumption of validity if the jury has otherwise been
properly instructed on the clear and convincing evidentiary
standard required to prove invalidity. Chiron Corp. v.
Genentech, Inc., 363 F.3d 1247, 1258–59 (Fed. Cir. 2004).
Here, the district court properly and repeatedly instructed
the jury on the clear and convincing standard. Thus, there
was no error in declining to instruct the jury on the presumption of validity.
2
IOENGINE argues that under 35 U.S.C. § 315(e)(2),
Ingenico should have been estopped from presenting the
Firmware Upgrader at trial. Ingenico relied on the DiskOnKey Device operating the Firmware Upgrader—device
art that Ingenico could not have raised during the IPR—to
challenge that the claimed invention was known or used by
others, on sale, or in public use. IOENGINE claims that
IPR estoppel applies because the Firmware Upgrader was
entirely cumulative and substantively identical to the Readme instructions and screenshots—which, according to
IOENGINE, are printed publications that reasonably could
have been raised during the IPR.
Whether Ingenico should be estopped depends on the
proper interpretation of the term “ground” used in
35 U.S.C. § 315(e)(2). We have not previously interpreted
the term’s meaning, and there is a split among district
courts about its proper interpretation. See Prolitec Inc. v.
ScentAir Techs., LLC, No. 20-984-WCB,
2023 WL 8697973,
at *21–*23 (D. Del. Dec. 13, 2023) (collecting cases).
“Interpretation of the IPR estoppel statute, an issue
unique to patent law, is a question of law we review de novo
applying Federal Circuit law.” Ironburg Inventions Ltd. v.
Valve Corp., 64 F.4th 1274, 1296 (Fed. Cir. 2023) (emphasis and internal citations omitted). We begin our analysis
by first looking to the statutory language. The estoppel
statute provides:
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12 INGENICO INC. v. IOENGINE, LLC
(2) Civil actions and other proceedings. The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final
written decision under section 318(a), or the real
party in interest or privy of the petitioner, may not
assert either in a civil action arising in whole or in
part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the
claim is invalid on any ground that the petitioner
raised or reasonably could have raised during that
inter partes review.
35 U.S.C. § 315(e)(2) (emphasis added). The Patent Act
does not expressly define “ground.” See
35 U.S.C. § 100.
However,
35 U.S.C. §§ 311 and 312 also use the term
ground and may properly aid our understanding of its use
in § 315. See IBP, Inc. v. Alvarez,
546 U.S. 21, 34 (2005)
(“[T]he normal rule of statutory interpretation [is] that
identical words used in different parts of the same statute
are generally presumed to have the same meaning.”).
Under 35 U.S.C. § 311(b), the scope of an IPR is limited
to “a ground that could be raised under section 102 or 103.”
This makes clear that grounds are the theories of invalidity
available to challenge a claim under §§ 102 and 103. But,
instead of allowing a petitioner to challenge a claim under
any theory of invalidity, Congress intentionally limited an
IPR’s scope to invalidity challenges based on “prior art consisting of patents or printed publications.”
35 U.S.C.
§ 311(b). By design, a petitioner has no opportunity to challenge that the claimed invention was known or used by others, on sale, or in public use at IPR. See Qualcomm Inc. v.
Apple Inc. (Qualcomm I),
24 F.4th 1367, 1376 (Fed. Cir.
2022) (“[O]ur understanding [is] that Congress sought to
create a streamlined administrative proceeding that
avoided some of the more challenging types of prior art
identified in
35 U.S.C. § 102, such as commercial sales and
public uses, by restricting the ‘prior art’ which may form a
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INGENICO INC. v. IOENGINE, LLC 13
basis of a ground to prior art documents.”); Lynk Labs, Inc.
v. Samsung Elecs. Co.,
125 F.4th 1120, 1128 (Fed. Cir.
2025) (“The stated intent for this limitation was to allow
the PTO to evaluate ‘patents and printed materials, matters which are normally handled by patent examiners,’
while excluding ‘[c]hallenges to validity on other grounds
(e.g., public uses or sales)[, which] would remain the province of the courts.’”) (quoting S. REP. NO. 96-617, at 2
(1980)) (alteration in original). These are grounds that
could normally be raised under §§ 102 or 103, but Congress
excluded in IPR proceedings. 1
1 Comparing the IPR statutes to the post-grant review statutes further confirms both (1) that Congress deliberately excluded these grounds in an IPR and (2) our
interpretation of the term ground. The PGR estoppel statute similarly states that “[t]he petitioner in a post-grant
review . . . may not assert . . . that the claim is invalid on
any ground that the petitioner raised or reasonably could
have raised during that post-grant review.” 35 U.S.C.
§ 325(e)(2). Under
35 U.S.C. § 321(b), the PGR statute that
corresponds to
35 U.S.C. § 311(b), “[a] petitioner in a post-grant review may request to cancel as unpatentable 1 or
more claims of a patent on any ground that could be raised
under paragraph (2) or (3) of section 282(b) (relating to invalidity of the patent or any claim).” Thus, in a PGR, a petitioner may challenge the “[i]nvalidity of the patent or any
claim in suit on any ground specified in part II as a condition for patentability,” on “any requirement of section 112,
except . . . the failure to disclose the best mode,” or on “any
requirement of section 251.”
35 U.S.C. § 282(b)(2)–(b)(3)(B)
(emphasis added). This includes grounds that the claimed
invention was known or used by others, on sale, or in public
use. In contrast to PGRs, Congress intentionally limited
IPRs to grounds that the claimed invention was patented
or described in a printed publication.
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14 INGENICO INC. v. IOENGINE, LLC
Further, a ground is not the prior art asserted during
an IPR. In drafting 35 U.S.C. § 315(e)(2), Congress could
have precluded petitioners from asserting in district court
that the claim is invalid on any prior art that the petitioner
raised or reasonably could have raised during that inter
partes review, but Congress chose not to. Instead, Congress
precluded petitioners from asserting grounds in district
court. Thus, IPR estoppel does not preclude a petitioner
from asserting the same prior art raised in an IPR in district court, but rather precludes a petitioner from asserting
grounds that were raised or reasonably could have been
raised during an IPR. The only anticipation and obviousness challenges that a petitioner can make during an IPR
are that the claims were patented or described in a printed
publication. IPR estoppel precludes these challenges in district court if they were raised or reasonably could have
been raised during the IPR. But 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.
35 U.S.C. § 312(a)(3) provides additional support that
prior art is evidence of a ground, not coextensive with a
ground. “The petition . . . defines the scope of the IPR.”
Click-to-Call Techs. LP v. Ingenio, Inc.,
45 F.4th 1363, 1368
(Fed. Cir. 2022) (quoting California Inst. of Tech. v. Broadcom Ltd.,
25 F.4th 976, 990 (Fed. Cir. 2022)). Under
§ 312(a)(3) “the evidence that supports the grounds . . . include[s]—(A) copies of patents and printed publications
that the petitioner relies upon in support of the petition.”
Thus, while patents and printed publications are evidence
that support a ground that the claimed invention was patented or described in a printed publication, they are not
coextensive with a ground.
Lastly, this interpretation of ground is consistent with
how we have previously interpreted 35 U.S.C. § 311(b). In
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INGENICO INC. v. IOENGINE, LLC 15
Qualcomm Inc. v. Apple Inc. (Qualcomm II), we considered
whether applicant admitted prior art (AAPA), which was
not a prior art patent or printed publication, could form the
basis of an IPR ground if it is used in combination with one
or more patents or printed publications. No. 23-1208,
2025 WL 1174161, at *7 (Fed. Cir. Apr. 23, 2025). We interpreted § 311(b) to “mean[] that ‘the basis’ of an IPR
ground asserting unpatentability can ‘only’ include ‘prior
art consisting of patents or printed publications.’” Id. at *8
(quoting
35 U.S.C. § 311(b)). We held that “because the basis can only include prior art consisting of patents or
printed publications, and because AAPA is not a prior art
patent or printed publication . . . , it follows that the plain
meaning of § 311(b) does not permit the basis to include
AAPA.” Id. But we noted “that an IPR petition may rely on
AAPA for certain uses, so long as the AAPA is not the basis
of a ground in violation of § 311(b).” Id. (citing Qualcomm
I, 24 F.4th at 1375). This supports our interpretation that
grounds are the theories of invalidity available to challenge
a claim under
35 U.S.C. §§ 102 and 103, which are limited
in an IPR to asserting that the claimed invention was patented or described in a printed publication (or would have
been obvious only on the basis of prior art patents or
printed publications). If prior art that is not a patent or
printed publication, such as AAPA, was used in combination with patents or printed publications such that the “basis” of the ground included AAPA, the petitioner would no
longer be asserting a ground that the claimed invention
was patented or described in a printed publication.
Therefore, we hold that IPR estoppel applies only to a
petitioner’s assertions in district court that the claimed invention is invalid under 35 U.S.C. §§ 102 or 103 because it
was patented or described in a printed publication (or
would have been obvious only on the basis of prior art
Case: 23-1367 Document: 58 Page: 16 Filed: 05/07/2025
16 INGENICO INC. v. IOENGINE, LLC
patents or printed publications). 2 IPR estoppel does not
preclude a petitioner from asserting that a claimed invention was known or used by others, on sale, or in public use
in district court. These are different grounds that could not
be raised during an IPR.
Here, Ingenico challenged that the DiskOnKey System
was known or used by others, on sale, or in public use.
These are grounds that could not have been raised during
the IPR. The Readme file and other printed publications
that Ingenico relied upon were evidence to support these
grounds. To the extent that Ingenico reasonably could have
raised the Readme file during the IPR, it would only be to
challenge that the claimed invention was described in a
printed publication—a separate ground not raised at trial.
Thus, a new trial is not warranted because IPR estoppel
did not preclude Ingenico from relying on the DiskOnKey
System with related printed publications at trial to prove
the claimed invention was known or used by others, on
sale, or in public use.
III
We have considered IOENGINE’s remaining arguments and find them unpersuasive. We affirm.
AFFIRMED
2 Of course, for IPR estoppel to apply, all other statutory requirements must be met, including that the IPR
“results in a final written decision” and that the petitioner’s
invalidity assertion in district court be a “ground that the
petitioner raised or reasonably could have raised during
that” IPR. 35 U.S.C. § 315(e)(2); see Ironburg Inventions,
64 F.4th at 1298 (holding that a petitioner “reasonably
could have raised” a ground if “a skilled searcher conducting a diligent search reasonably could have been expected
to discover” it).
