Arguments Supporting Motion to Stay Pending IPR Do Not Judicially Estop Invalidity Arguments​

The court denied plaintiffs' motion to strike portions of defendants' invalidity contentions based on judicial estoppel following inter partes review. "Plaintiffs contend that because [the petitioner defendant] argued numerous times before this Court that pending IPR petitions would simplify this litigation through statutory estoppel or invalidation, that [defendant] derived an unfair advantage and should be estopped from raising nearly all of its invalidity arguments. . . . Because [defendant] argued to the Court that the IPR proceedings stood to simplify this litigation through the application of statutory estoppel, plaintiffs seek to prevent [defendant] from now arguing that a narrower estoppel applies post-IPR. The Court finds plaintiffs’ judicial estoppel argument unpersuasive. The Court sees nothing 'clearly inconsistent' about [defendant's] arguments in support of staying this case and its desire to maintain its invalidity defenses moving forward. Even if [defendant] did state that such broad estoppel would apply, the Federal Circuit has only recently begun to clarify the scope of IPR estoppel, such that any inconsistency between [defendant's] previous and current positions is excusable."

Verinata Health, Inc., et al v. Ariosa Diagnostics, Inc., et al, 3-12-cv-05501 (CAND January 19, 2017, Order) (Illston, USDJ)