Last week, the Federal Circuit issued a decision in Ingenico Inc. v. IOENGINE, LLC resolving a longstanding district court split by holding that IPR estoppel does not extend to system art “in public use, on sale, or otherwise available to the public.”

Under 35 U.S.C. § 315(e)(2), a petitioner in an IPR that reaches a final written decision is estopped from asserting, in another proceeding, any invalidity ground against a challenged claim “that the petitioner raised or reasonably could have raised during that [IPR].”  Given that IPRs are limited to “patents or printed publications,” district courts have disagreed on whether IPR estoppel extends to prior art systems that embody the disclosures of a patent or printed publication relied on in the IPR.  Some courts adopted a narrow interpretation under which estoppel could never extend to system art regardless of its similarity.1  Other courts adopted a broad interpretation under which IPR estoppel extends to any system art that is “materially identical” to prior art references that were or reasonably could have been cited in the IPR.2

In Ingenico, the Federal Circuit resolved this disagreement in favor of the narrow interpretation.  Noting that Congress “intentionally” and “deliberately” limited the scope of IPRs to challenges based on “prior art consisting of patents or printed publications,” the court held that “[b]y design” a ground based on system art “known or used by others, on sale, or in public use” is not a “ground that the petitioner [could] raise[] or reasonably could have raised” in an IPR and thus did not fall within the scope of IPR estoppel.3  Notably, the Ingenico court held that the patent challenger could even “rely[] on the same patents and printed publications” asserted in the IPR “as evidence” of system art “known or used by others, on sale, or in public use.”4

The Federal Circuit’s Ingenico decision thus gives patent challengers greater flexibility in maintaining similar invalidity challenges in both an IPR and parallel litigation—even if the IPR challenge is ultimately unsuccessful—by asserting a ground based on a system “known or used by others,” “on sale,” or “in public use” in the parallel litigation, regardless of whether the prior art system is evidenced by the same patents or printed publications relied on in the IPR.

This flexibility is not without risk for patent challengers.  The USPTO has recently signaled that it is more likely to discretionarily deny an IPR under Fintiv in view of cumulative system art raised in parallel litigation.  Exemplifying this risk is Motorola Sols., Inc. v. Stellar, LLC, where Acting USPTO Director Coke Stewart issued a Director Review decision discretionarily denying an IPR despite the petitioner having filed a Sotera stipulation agreeing to forego the invalidity grounds it “raised or reasonably could have raised” in its IPR in the parallel district court proceeding.5 As the Acting Director noted, the petitioner’s invalidity arguments in the parallel litigation “include[d] combinations of the prior art asserted in these [IPR] proceedings with unpublished system art, which Petitioner’s stipulation [wa]s not likely to moot” and thus did not sufficiently mitigate Fintiv’s concerns of duplication between the different venues. 6 Since Motorola, at least one PTAB panel has discretionarily denied IPR under Fintiv based on similar risks of duplication in view of system art raised in a parallel proceeding.7

Ultimately, while Ingenico grants patent challengers greater flexibility to rely on system art in parallel litigation even if an IPR challenge is ultimately unsuccessful, that flexibility is accompanied by a greater risk of discretionary denial under Fintiv.  There are tools still available to mitigate the risk of discretionary denial under Fintiv.  For example,  petitioners may wish to consider whether to enter a “Sotera plus” stipulation to, if the IPR is instituted, forego invalidity grounds in parallel litigation that are based on system art that is coextensive with the references relied on in the IPR.  However, while such a stipulation may weigh “strongly against” discretionary denial, recent PTAB decisions suggest that investment in and timing of the district court proceeding will be the heaviest factors under Fintiv going forward, particularly where the merits of an IPR Petition are not particularly strong, e.g., “present, at best, a close call.”  See, e.g., Solus Advanced Materials Co. v. SK Nexilis Co., IPR2024-01460, Paper 14 at 15-19, 31.

  1. See, e.g., General Access Solutions, Ltd. v. Sprint Spectrum LLC, No. 2:20-CV-00007-RWS, 2021 WL 5154085, at *4 (E.D. Tex. July 21, 2021) (“IPR estoppel does not apply here.  Systems art cannot be raised in IPR.  Thus, the Navini System—either alone or in combination with Toshimitsu—was not raised and could not have been raised as an invalidity ‘ground’ in Sprint’s IPR.”). ↩︎
  2. See, e.g., Contour IP Holding, LLC v.. GoPro, Inc., No. 17-cv-04738-WHO, 2025 WL 1218748, at *13 (N.D. Cal. Mar. 24, 2025) (“I agree with the courts that interpret ‘grounds’ under 35 U.S.C. § 315(e)(2) broadly, encompassing physical devices that are materially identical to a patent or printed publication.”); Hafeman v. LG Electronics, Inc., No. 6:21-cv-00696-ADA, 2023 WL 4362863, at *1 (W.D. Tex. Apr. 14, 2023) (“Although LG uses two system references—Ms. Hafeman’s Retriever product and Apple’s Find My iPhone—for its invalidity argument that it could not raise before the PTAB, estoppel still applies when the allegedly new references have ‘materially identical’ disclosures as the IPR art.” (quoting Wasica Fin. GmbH v. Schrader Int’l, Inc., 432 F. Supp. 3d 448, 454–55 (D. Del. 2020))). ↩︎
  3. See Ingenico at 12-16 & n.1. ↩︎
  4. Id. at 14. ↩︎
  5. See generally IPR2024-01205, Paper 19 (PTAB Mar. 28, 2025). ↩︎
  6. Id. at 4. ↩︎
  7. SAP Am., Inc. v. Cyandia, Inc., IPR2024-01496, Paper 13 (Apr. 7, 2025) ↩︎