Wasica Finance GmbH et al. v. Schrader Int’l, Inc. et al., C.A. 13-1353-LPS (D. Del. January 14, 2020) (publicly available on January 21, 2020).
Plaintiffs Wasica and Bluearc (collectively “Wasica”) filed an infringement action based on U.S. Patent No. 5,602,524 against defendants (collectively “Schrader”). The patent pertained to devices for measuring the air pressure in tires.
Thereafter, Schrader filed IPR petitions that primarily relied upon an Italian patent to Oselin in combination with other references. The PTAB found that claim 6 of the ‘524 patent was patentable, which the Federal Circuit affirmed. When returning to the district court, Schrader again attacked the validity of claim 6 based upon the Oselin patent, 14 other patents or publications and one product, namely Corvette ZR-1 Sensors.
District Judge Leonard Stark determined that Schrader was estopped. Judge Stark reasoned that Oselin was considered during the IPR and that Schrader did not dispute that the 14 patents and publications could have been raised. Judge Stark also rejected Schrader’s argument that the Corvette ZR-1 sensor was ineligible for use in an IPR, thereby making estoppel inapplicable.
Judge Stark explained that statute distinguished between grounds and evidence, and that estoppel was based upon grounds. Judge Stark determined that the prior art Siuru patent disclosed the same elements as the Corvette ZR-1 sensor, and that the Siuru patent could have been raised. Accordingly, the fact that the Corvette ZR-1 sensor could not be evidence in the IPR did not mean that the grounds were different. Simply put, the Siuru patent could have been raised as a substitute for the Corvette ZR-1 sensor, and thus estoppel applied.