315(e)(2) "with respect to that claim on any ground"

[Rick Neifeld]

The Federal Circuit resolved a circuit split, in Ingenico Inc. v. Ioengine, LLC, 2023-1367 (Fed. Cir. 5/7/2025).  Specifically, the court held that "ground," within the meaning of 315(e)(2), does not estop use of evidence in district court to support a ground that a claimed invention was known or used by others, on sale, or in public use.

Here is an excerpt from the opinion:

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). *** 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 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.  [Ingenico Inc. v. Ioengine, LLC, 2023-1367 (Fed. Cir. 5/7/2025).]

Rick Neifeld, J.D., Ph.D.

Neifeld IP Law PLLC

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