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f'real Foods, LLC v. Hamilton Beach Brands, Inc.

United States District Court for the District of Delaware

April 10, 2019, Decided; April 10, 2019, Filed

Civil Action No. 16-41-CFC



1. In this patent case, Plaintiffs accuse Defendants of infringing multiple patents. Defendants successfully petitioned the United States Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) of one of these patents, U.S. Patent No. 7,520,662 (the "#662 patent"). In the IPR, Defendants argued that the #662 patent was invalid for obviousness based on disclosures in the prior art. Defendants lost. Defendants then appealed this loss to the Federal Circuit and lost again. See Hamilton Beach Brands, Inc. v. f'real Foods, LLC, 908 F.3d 1328, 1342-43 (Fed. Cir. 2018).

2. Plaintiffs have now filed a motion in limine "to preclude Defendants from asserting at trial that Claim 21 of [the #662 patent] is 'invalid on any ground that the petitioner raised or reasonably could have raised' during the [IPR] of that patent [*3]  [] under 35 U.S.C. § 315(e)(2)." D.I. 172. For the reasons that follow, I will grant in part and deny in part Plaintiffs' motion.

3. Plaintiffs argue that Defendants are estopped from basing an invalidity argument on certain prior art combinations, because Defendants could have raised the prior art combinations in the IPR proceedings instituted for the #662 patent.

4. The first prior art reference at issue is Japanese Utility Model Application, JP H04-136787 U1 (the "Sato reference"). Plaintiffs argue that Defendants are estopped from basing any invalidity argument on any prior art combination involving the Sato reference. It is undisputed that Defendants did not learn about the Sato reference until two months after the filing of the IPR for the #662 patent. Therefore, the Court's estoppel inquiry is limited to whether the Sato reference could reasonably have been discovered by a "skilled searcher conducting a diligent search." Parallel Networks Licensing, LLC v. IBM Corp., 2017 U.S. Dist. LEXIS 28461, 2017 WL 1045912, at *11 (D. Del. Feb. 22, 2017) (internal quotation marks and citation omitted).

5. It is undisputed that Plaintiffs bear the burden of establishing estoppel. The only "evidence" offered by Plaintiffs in support of their motion is the fact that Defendants uncovered Sato two months after filing the IPR for the #662 patent.

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2019 U.S. Dist. LEXIS 62547 *; 2019 WL 1558486


Prior History: F'Real Foods, LLC v. Hamilton Beach Brands, 2017 U.S. Dist. LEXIS 195798 (D. Del., Nov. 29, 2017)


patent, invalid, databases, diligent, estopped, searcher, skilled, uncover, undisputed, estoppel, Limine