Omnitracs, LLC v. Platform Science, Inc.
- Proceeding
- district
- Area
- civil
- Panel
- Cathy Ann Bencivengo (author)
Analysis
Omnitracs moved to estop Platform Science from asserting invalidity defenses based on three prior art systems, arguing that written descriptions of these systems were available and materially identical to the systems themselves. The court denied the motion, finding that Omnitracs failed to prove the systems in operation were materially identical to the written descriptions, and that IPR estoppel does not apply to physical art or combinations of physical art and written references.
| What the court decided | The model |
|---|---|
Motion for IPR Estoppel Denied“Omnitracs’ motion to estop Platform Science from relying on the identified system is DENIED.” | agree with court The court correctly applied the principle that IPR estoppel under 35 U.S.C. § 315(e)(2) generally does not extend to prior art consisting of physical devices or systems, as IPR proceedings are limited to patents and printed publications under 35 U.S.C. § 311(b). The court also correctly placed the burden on the party asserting estoppel to show by a preponderance of the evidence that the grounds were raised or reasonably could have been raised. The court found that Omnitracs failed to meet this burden because it did not demonstrate that the physical systems were materially identical to the written descriptions, and Platform Science provided evidence that the dynamic operation of the systems offered distinctions not found in the written materials. This aligns with the cited authorities (IOENGINE, SPEX Techs., Microchip Tech.). |
The order itself: sound — The order is sound. It correctly identifies the statutory limitations on IPR grounds (patents and printed publications only) and the resulting limitation on estoppel. It properly applies the burden of proof to the movant and relies on persuasive district court and Federal Circuit authority to conclude that physical systems, which may have dynamic operational features not captured in static written descriptions, are not subject to IPR estoppel. The reasoning directly addresses the specific argument made by Omnitracs (that written descriptions were materially identical) and rejects it based on the evidence presented by Platform Science.
Opinion
1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 OMNITRACS, LLC AND XRS Case No.: 20-cv-958-CAB-DDL CORPORATION, 12 ORDER ON PLAINTIFFS’ MOTION Plaintiffs, 13 FOR IPR ESTOPPEL [Doc. No. 383] v. 14 PLATFORM SCIENCE, INC., 15 Defendant. 16 17 Plaintiffs Omnitracs LLC and XRS Corporation (jointly “Omnitracs”) allege 18 defendant Platform Science, Inc. infringes U.S. Patent No. 6,925,308 (‘308 patent). 19 Platform Science petitioned for Inter Partes Review (“IPR”) of the ‘308 patent. The 20 challenged claims of the ‘308 patent were not found unpatentable. 21 Omnitracs now moves for an order estopping Platform Science from contending in 22 these District Court proceedings any invalidity ground Platform Science raised or 23 reasonably could have raised during the IPR. See 35 U.S.C. § 315(e)(2); see also 24 California Inst. of Tech. v. Broadcom Ltd., 25 F.4th 976, 991 (Fed. Cir. 2022) (estoppel 25 applies to all grounds that “reasonably could have been asserted against the claims included 26 in the petition”). Specifically, Omnitracs contends that Platform Science should be 27 estopped from offering invalidity defenses based on three prior art systems, alone or in 28 1 combination with other art: the Grid Data System, the Microsoft Outlook System, and the 2 OmniTRACS system. 3 The party asserting estoppel bears the burdened to show, by a preponderance of the 4 evidence, that estoppel applies. See Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274, 5 1299 (Fed. Cir. 2023). 6 IPR proceedings allow parties to bring a validity challenge only on the basis of prior 7 art consisting of patents or printed publications. 35 U.S.C. § 311(b). IPR estoppel does not 8 apply to device or system art because a petitioner cannot use an IPR to challenge the 9 validity of a patent claim based on prior art products or systems. See IOENGINE, LLC v. 10 PayPal Holdings, Inc., 607 F. Supp. 3d 464, 511 (D. Del. 2022) (“in general, IPR estoppel 11 does not apply to device art”). 12 Omnitracs asserts that written descriptions of the asserted systems were available to 13 Platform Science and are materially identical to the systems themselves and therefore could 14 have been raised in the IPR. Platform Science contends it intends to offer the operating 15 systems themselves as evidence and could not have done so in the IPR. 16 The Court finds that Omnitracs has not demonstrated that the systems in operation 17 are materially identical to written materials describing functions of the systems. Platform 18 Science has offered evidence that the systems in operation perform elements of the asserted 19 claims of the ‘308 patent that are not disclosed in written descriptions of the systems. The 20 dynamic operation of the prior art systems offers relevant distinctions from printed 21 publications describing the systems. See Microchip Tech. Inc. v. Aptiv Servs. US LLC, No. 22 1:17-CV-01194-JDW, 2020 WL 4335519, at *4 (D. Del. July 28, 2020) (finding a court 23 need not dig into the substance of the references to determine if the physical devices do not 24 add anything beyond the written references). 25 Platform Science may offer the systems, alone or in combination with printed 26 publications, to explain a system prior art invalidity theory. Section 315 does not estop 27 references based on physical art or combinations of physical art and written references. 28 See SPEX Techs. Inc. v. Kingston Tech. Corp., No. SACV1601790JVSAGRX, 2020 WL 1 || 4342254, at *15 (C.D. Cal. June 16, 2020) (declining to piecemeal exclude printed 2 || publications used in combination with system art). 3 Omnitracs’ motion to estop Platform Science from relying on the identified system 4 is DENIED. 5 6 IT IS SO ORDERED. 7 |\|Dated: April 15, 2024 € Z 8 Hon. Cathy Ann Bencivengo ? United States District Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28