Network-1 Technologies, Inc. v. Hewlett-Packard Co., Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir., September 24, 2020).

Hewlett-Packard (HP) joined an IPR instituted by Avaya against Network-1’s ‘930 patent. HP only sought inter partes review on the grounds asserted by Avaya, which was obviousness based on two references. Network-1 prevailed in the IPR.

In the ‘930 infringement action brought by Network-1 against HP, HP sought to raise an obviousness argument based on references different from those in the Avaya IPR. The district court held that HP was estopped from relying on the different references under 35 USC §315.

Upon review, the Federal Circuit vacated the district court’s estoppel determination. Since HP came in by way of joinder, it was limited to the grounds presented by Avaya in the already-instituted IPR. No other grounds “reasonably could have been raised” by HP in the Avaya IPR, and thus section 315 of the statute would not extend estoppel beyond the two references in the Avaya IPR. Slip op. at 19-20.