The United States Court of Appeals for the Federal Circuit recently issued a decision in Ingenico Inc. v. IOENGINE, LLC that warrants careful analysis by patent owners and practitioners. This May 7, 2025 opinion addresses important questions regarding prior art invalidity grounds and the scope of Inter Partes Review (IPR) estoppel under 35 U.S.C. § 315(e)(2). The decision has significant implications for patent enforcement strategies, particularly regarding how patent owners defend against invalidity challenges following IPR proceedings.

The Ingenico case concerned patents directed to portable devices, such as USB thumb drives, with processors that facilitate communications between a terminal and a network server. After IOENGINE asserted these patents against PayPal, Ingenico (a supplier of accused products to PayPal) filed a declaratory judgment action and subsequently challenged IOENGINE's patents through both IPR petitions and district court litigation. The Federal Circuit's decision upholds a jury verdict invalidating IOENGINE's patent claims based on prior art that was not raised in the IPR proceedings, interpreting the IPR estoppel provision in a manner that may significantly disadvantage patent owners.

This decision merits attention because it appears to create additional avenues for accused infringers to challenge patent validity, even after participating in IPR proceedings, by drawing fine distinctions between "grounds" that could have been raised in an IPR and those reserved for district court litigation. The court's interpretation of "ground" in the IPR estoppel statute potentially weakens the intended protective effect of estoppel provisions, which were designed to prevent patent owners from having to repeatedly defend their patents against similar invalidity challenges in different forums.

The Federal Circuit’s February 10, 2025 decision in Kroy IP Holdings, LLC v. Groupon, Inc. fundamentally shifts the interplay between district‑court patent litigation and Patent Trial and Appeal Board (PTAB) inter partes reviews (IPRs). In holding that a PTAB final written decision invalidating certain claims cannot collaterally estop a patentee from later asserting immaterially different claims in district court, the Federal Circuit recalibrated long‑standing assumptions about estoppel, burdens of proof, and claim‑assertion strategy. Patent owners should now reassess how they structure infringement complaints, manage claim portfolios, and engage in parallel PTAB proceedings. In this episode, Angela and Erick discuss practical guidelines including staggered claim assertion strategies and key distinctions from prior rulings. Join us for practical tips for navigating the complexities of post-Kroy patent litigation.

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The Patent Litigation Podcast by Erick Robinson explores into the intricate world of patent disputes, bringing together expert insights on legal strategies, landmark cases, and industry trends. Here, we interview seasoned litigators, judges, and technical experts who share practical wisdom on every phase of patent litigation. From pre-filing considerations to post-trial remedies, we deliver valuable perspectives for attorneys, in-house counsel, inventors, and business leaders.