Final Word On IPR Estoppel: Rehearing Denied In Ingenico v. IOENGINE

The Federal Circuit recently issued a nonprecedential order denying IOENGINE, LLC's petition for panel rehearing and rehearing en banc in in Ingenico Inc. v. IOENGINE, LLC (No. 2023-1367). IOENGINE sought further review of the court's earlier decision on the boundaries of IPR estoppel, but the court declined to revisit the issue. The order marks the close of Federal Circuit review for this phase of a high-profile patent dispute and confirms the boundaries on IPR estoppel set by the Federal Circuit.

The Broader Context: IPR Estoppel Boundaries

As discussed in my earlier article on this case, "A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE", the Federal Circuit clarified the scope of IPR estoppel under 35 U.S.C. § 315(e). Particularly, the Federal Circuit clarified that (i) grounds not based on patents or printed publications (e.g., grounds based on device art and the like) are not within the scope of IPR estoppel; and (ii) 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. That decision drew significant attention for its interpretation of how and when patents and printed publications may be used as part of an invalidity defense in district court proceedings without running afoul of IPR estoppel.

With the denial of rehearing, the Federal Circuit cements its panel ruling as the controlling interpretation of IPR estoppel in this context. Practitioners should take note: unless and until the U.S. Supreme Court intervenes or en banc review is granted in a future case, the bounds of IPR estoppel as articulated in Ingenico v. IOENGINE remain operative.

Looking Forward

For parties navigating patent disputes, this decision underscores the critical importance of developing a comprehensive strategy for IPR and district court proceedings. The Federal Circuit's stance limits avenues for raising validity challenges not presented during IPR, placing a premium on thorough front-end diligence. Patent challengers should continue to identify alternative invalidity theories for district court proceedings but keep in mind that patents and printed publications may reinforce those defenses.

As Ingenico v. IOENGINE continues to shape estoppel jurisprudence, I will provide further updates on significant developments in this case and related patent litigation trends.

For a deeper dive into the Federal Circuit's original ruling and its practical implications, please see my earlier analysis: A Line in the Sand: Federal Circuit Bounds IPR Estoppel in Ingenico v. IOENGINE.

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