D. Del.: Plaintiff's Seeking Broader Construction In District Court Rather Than In Reexamination Does Not Preclude Reexamination Estoppel

• Jurisdiction: United States,Federal
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Subject Matter: Intellectual Property, Patent
• Author: Mr Thomas Landers IV and Rachel J. Elsby
• Published date: 07 February 2023

In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds in inter partes reexamination proceedings. At issue was whether pre-America Invents Act (AIA) reexamination estoppel under 35 U.S.C. ' 315(c) applies even if the patent owner raises a different claim construction in district court than the USPTO applied during reexamination. The District Court answered "yes," reasoning that a "party's proposed construction of a term does not change . . . whether a party previously asserted that a claim ... was obvious in an inter partes reexamination."

Victaulic owns U.S. Patent No. 7,712,796 ("the '796 Patent"), which relates to a "deformable mechanical pipe coupling." Independent claims 1, 21, 41 and 44 of the '796 Patent each includes a "being deformable" limitation, which recites "said segments being deformable upon adjustable tightening of said connection members so as to substantially conform the curvature of said arcuate surfaces to the outer surfaces of said pipe elements within said circumferential grooves."

In 2012, ASC requested inter partes reexamination of certain claims of the '796 Patent, including claims 1, 21, 41 and 44. ASC's request asserted obviousness grounds against those claims based on "Reynolds" and "Reynolds in view of Webb." The USPTO instituted reexamination on both of those grounds but determined that the claims were "valid and patentable" in a final decision.

Notably, during reexamination, the USPTO agreed to add language to the "being deformable" limitation in claims 21, 41 and 44'but not in claim 1. However, the USPTO "mistakenly omitted" the added language from its decision, and the claims were not formally amended to add that language.

In 2020, Victaulic asserted claim 1 of the '796 Patent against ASC in the District of Delaware, among other claims. In its invalidity contentions for claim 1, ASC again asserted "Reynolds" and "Reynolds in view of Webb."

In a motion for summary judgment, Victaulic argued that ASC was estopped from asserting "Reynolds" or "Reynolds in view of Webb" against claim 1 under 35 U.S.C. ' 315(c) because ASC raised those grounds in the reexamination proceedings. Section 315(c) states that a "third-party requester" like ASC is "estopped from asserting at a later time, in any civil action . . . the invalidity of any claim finally determined to be valid...