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Douglas Dynamics, LLC v. Meyer Products LLC

United States District Court, W.D. Wisconsin

April 18, 2017

DOUGLAS DYNAMICS, LLC, Plaintiff,
v.
MEYER PRODUCTS LLC, Defendant.

          OPINION & ORDER

          JAMES D. PETERSON District Judge

         Under the American Invents Act, a person can challenge the validity of an issued patent through inter partes review (IPR), an adversarial proceeding conducted expeditiously before the Patent Trial and Appeal Board. IPR is commonly pursued, as in this case, by a defendant who has been sued for patent infringement in district court. In theory, IPR provides an efficient alternative forum for contesting patent validity, which would otherwise have to be resolved in more costly and dragged-out district court litigation.

         One key element of the efficiency of the IPR alternative is the estoppel provision in 35 U.S.C. § 315(e). This section provides that one who gets a final decision as to the validity of a patent claim in an IPR is estopped from asserting invalidity of that claim in another IPR or in district court on any ground that the person “raised or reasonably could have raised during that inter partes review.” In other words, if you take the IPR alternative, you have to be satisfied with the PTAB answer; you cannot re-litigate the matter in district court. But the scope of IPR estoppel is not entirely clear, and the parties to this case, fresh off their IPR experience, need to know what invalidity defenses are still in play.[1]

         Plaintiff Douglas Dynamics, LLC, accuses defendant Meyer Products LLC of infringing its patent, U.S. Patent No. 6, 928, 757 (the '757 patent), for a snowplow mounting assembly. Shortly after Douglas sued, Meyer petitioned PTAB for IPR of claims 1, 4-7, and 18 of Douglas's patent. PTAB granted the petition, and the parties sought to stay litigation in this court while the IPR proceeded. They offered to this court the typical promises that the IPR would simplify the case:

[A] stay will simplify the issues in the litigation because the instituted IPR will result in either the claims at issue being cancelled and/or amended or one or more of the claims at issue confirmed with Meyer estopped from making invalidity arguments that it made or reasonably could have made in the IPR in the litigation.

Dkt. 47, at 2. The court granted the stay. Dkt. 48.

         The final decision in the IPR went Douglas's way: Meyer failed to show that any of the challenged claims were invalid. Dkt. 50-1. Meyer has appealed to the Federal Circuit and sought a stay pending the appeal. Dkt. 62. The court denied that request for a stay. Dkt. 65. So the case is active in this court again.

         Douglas now asks the court to decide which invalidity defenses Meyer can raise at this point. Dkt. 57. Unsurprisingly, the parties present starkly diverging views. Douglas takes what might be called the “complete alternative” view: the IPR is a complete alternative to litigating validity in district court. Once Meyer sought IPR, it had to completely lay out its validity attack in its PTAB petition, and it could no longer contest validity in this court. Meyer takes what we could call the “direct estoppel only” view: Meyer is estopped only from litigating the precise issues decided by PTAB on the merits; all else may be revisited in the district court at the conclusion of the IPR.

         BACKGROUND

         We need to get specific about the grounds on which Meyer contended that the '757 patent was invalid. Meyer petitioned for IPR with PTAB in May 2015. In its petition, Meyer asserted the following grounds for invalidity:

1. Claims 1, 4-7, and 18 are anticipated by Pruss.
2. Claims 6 and 18 are anticipated by Keeler.
3. Claims 1, 4-7, and 18 are obvious over Coates combined with Hetrick, Kost, or Watson.
4. Claims 1, 4-7, and 18 are obvious over Pruss combined with Kost or Watson.

See Dkt. 47-1, at 4-5. We will refer to these as the “petitioned grounds.”

         While the parties waited for PTAB to decide whether to institute IPR, litigation continued in this court. In August 2015, Meyer disclosed its invalidity contentions to Douglas, listing the same grounds for invalidity that it included in its IPR petition-the petitioned grounds-plus two new ones:

1. Claims 1, 4-7, and 18 are anticipated by Pruss.
2. Claims 1, 4-7, and 18 are anticipated by Keeler.
3. Claims 1, 4-7, and 18 are obvious over Coates combined with Hetrick, ...

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