Singular Computing accused Google in 2019 of infringing several patents relating to computers having “massively parallel processing” and of breaching a non-disclosure agreement that Google executed when considering utilizing such computers in developing artificial intelligence applications. The patents survived an Alice challenge and at least some of the asserted claims survived Inter Partes Review. Singular subsequently moved for summary judgment of partial validity, seeking to preclude Google from raising invalidity defenses that it could have raised in the IPR.
Judge Saylor granted this motion in part, prohibiting Google from raising defenses based on patents or printed publications that it did raise, or could reasonably have raised, during the IPR but declining to estop Google from raising invalidity defenses based on other evidence, such as lay and expert testimony on prior art systems. He noted that the extent to which the IPR estoppel applies to such prior art systems when patents or printed publications related to the systems were (or reasonably could have been) included remains an open question, with courts divided on the issue. Singular argued that the systems-based arguments were “cumulative” to those raised through the printed publications, but Judge Saylor noted that the statute governing the IPR estoppel said nothing about duplicative or cumulative arguments, and thus did not prevent such arguments. He rejected Google’s proposal to allow patents or printed publications to be utilized so long as they were combined with evidence that could not have been presented in the IPR. Instead, Judge Saylor determined that any patents or printed publications that were or could reasonably have been submitted in an IPR would thereafter be precluded in court.
In addressing the scope of documents that would be precluded, Judge Saylor determined that (a) documents actually relied upon in the IPR would be precluded; (b) documents that were known to Google at the time the IPR was filed but not submitted would be precluded; and (c) documents that described computer systems that Google intended to assert as prior art in the litigation (and that were known to Google when the IPR was filed) would be precluded, and expert or lay testimony that recites or summarizes these documents would also be excluded.
This ruling raises questions of strategy when determining whether to go the IPR route. If there is a printed publication that describes a prior art system, such as an instruction manual or schematic or the like, a defendant will have to determine whether the printed publication alone supports an invalidity argument so as to take advantage of an IPR or whether it works better in combination with the system itself – if the latter, no IPR should be filed, lest the particular document be estopped in the ensuing litigation.
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