Patent Litigation Team Succeeds in First Ever IPR Estoppel Bench Trial

(5/12/2020, Boston, MA) – Sheehan Phinney Bass & Green PA patent litigation attorneys won a first-ever bench trial on whether estoppel based on prior art from an earlier inter partes review before the USPTO’s Patent Trial and Appeal Board (“IPR estoppel”) applies to newly-found prior art references asserted subsequently in a district court litigation. Chief Judge Saylor of the U.S. District Court for the District of Massachusetts held in favor of Sheehan Phinney’s client MRSI Systems, LLC that IPR estoppel does not preclude the two significant newly-found prior art references not asserted in the earlier inter partes review proceeding.  The decision has a wide impact on parties seeking to challenge the validity of patents and on search firms who conduct prior art searches.

Chief Judge Saylor’s 32-page  ground breaking decision was the culmination of a prolonged and extensive discovery fight between the parties over complicated issues of attorney-client privilege and work-product immunity involving prior art searches before and after the inter partes review proceeding. Chief Judge Saylor’s opinion addressed issues of first impression that came about after the U.S. Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S.Ct. 1348 (2018), which changed the scope of IPR estoppel.

Sheehan Phinney attorneys and co-counsel from Crowell & Moring, successfully litigated this issue through a three-day bench trial followed by post-trial briefing. Chief Judge Saylor found in MRSI’s favor on both the subjective and objective prongs. He first found there was no doubt that MRSI did not know of the references. The Chief Judge next found that a skilled searcher reasonably could not have been expected to discover the references after conducting a diligent search. Read the full decision here.

MRSI is represented by Sheehan Phinney shareholders Peter Nieves, Robert Lucic and James Harris, and associate Bryanna Devonshire, along with partner Brian Paul Gearing, Ph.D., counsels Ali Tehrani and Zach Ruby, and associate Michelle Chipetine from Crowell & Moring.

The case is Palomar Technologies Inc. v. MRSI Systems LLC, case number 1:18-cv-10236, in the U.S. District Court for the District of Massachusetts.

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Sheehan Phinney is a full service business law firm representing local, national and international clients with innovative approaches and practical solutions. Founded in 1937, Sheehan Phinney has grown to over 60 attorneys with four offices throughout New Hampshire and Massachusetts and is known for professional excellence, practical counsel and commitment to both its clients and the communities it serves. Managing Intellectual Property Magazine named Sheehan Phinney as the 2020 Intellectual Property, Tier 1, Highly Recommended law firm in New Hampshire for the eighth consecutive year. We are the exclusive member in New Hampshire of Lex Mundi, the world’s leading association of premier independent law firms.