Polaris Industries Inc. v. Arctic Cat Inc.
- John Tunheim
- 0:15-cv-04475
- U.S. District Court · District of Minnesota
- 8
In Polaris Industries v. Arctic Cat, Judge Tunheim granted in part and denied in part Polaris’s motion to bar Arctic Cat’s patent-invalidity grounds.
Polaris Industries Inc. and Arctic Cat Inc. and Arctic Cat Sales Inc.; the ruling bars Arctic Cat from asserting combinations 3, 4, 6, and 7, but permits it to assert combinations 1, 2, and 5.
What happened
Polaris Industries Inc. v. Arctic Cat Inc. concerns Polaris’s patent-infringement case against Arctic Cat. After an earlier patent review board proceeding, Polaris asked the court to prevent Arctic Cat from using seven arguments that the patent was invalid because the invention was obvious.
The court ruled that Arctic Cat could reasonably have raised four of those arguments during the earlier proceeding: combinations 3, 4, 6, and 7. But the court found that combinations 1, 2, and 5 relied on physical vehicles, which could not have been used as prior-art grounds in that proceeding because it was limited to patents and printed publications.
Judge Tunheim granted in part and denied in part Polaris’s motion. Arctic Cat is barred from asserting combinations 3, 4, 6, and 7, but is not barred from asserting combinations 1, 2, and 5.
The detailed version
- Polaris Industries Inc. v. Arctic Cat Inc. · No. 0:15-cv-04475
- John Tunheim
- Aug. 15, 2019
Background
Polaris sued Arctic Cat Inc. and Arctic Cat Sales Inc. for allegedly infringing claims of Polaris’s ’501 patent. Arctic Cat later petitioned the Patent Trial and Appeal Board (PTAB) for inter partes review, a procedure for challenging patent claims based on certain prior art. The PTAB issued a final written decision denying Arctic Cat’s petition and finding that Arctic Cat had not shown that the challenged claims were unpatentable.
The PTAB proceeding involved four obviousness grounds. In the district-court case, Arctic Cat identified seven different combinations of prior art as invalidity defenses. The combinations used various patents, printed publications, manuals, and physical vehicles.
Legal standard and estoppel issue
Polaris moved for partial summary judgment. Summary judgment is a decision entered when there is no genuine dispute about material facts and the moving party is entitled to judgment under the law. Polaris argued that 35 U.S.C. § 315(e)(2) prevented Arctic Cat from asserting all seven combinations because Arctic Cat had raised them, or reasonably could have raised them, during the inter partes review.
Section 315(e)(2) applies after a final written decision and bars a petitioner from asserting in a related civil action that a patent claim is invalid on a ground the petitioner raised or reasonably could have raised during the inter partes review. The parties did not dispute that the final-decision requirement was satisfied or that the seven grounds concerned obviousness under 35 U.S.C. § 103. The dispute concerned whether Arctic Cat reasonably could have raised each combination during the inter partes review.
Court’s analysis
The court found that combinations 3, 4, 6, and 7 could reasonably have been raised during the inter partes review. Arctic Cat had identified those four grounds by at least March 2018, before filing its inter partes review petition. The court concluded that Arctic Cat had conducted a search and discovered those grounds, so it reasonably could have presented them in the earlier proceeding.
The court reached a different conclusion for combinations 1, 2, and 5. Those combinations included physical vehicles. The court declined to adopt Polaris’s proposed rule that Arctic Cat could be estopped from relying on the vehicles because manuals describing them might have been available. The court explained that inter partes review is limited to invalidity grounds based on patents or printed publications, and it found that products embodying patents or printed publications are not subject to this estoppel rule. Therefore, Arctic Cat could not reasonably have raised combinations 1, 2, and 5 during the inter partes review.
Disposition
Judge John R. Tunheim ordered that Polaris’s motion for an order finding Arctic Cat estopped from asserting its identified invalidity grounds was GRANTED in part and DENIED in part. Arctic Cat is estopped from asserting invalidity grounds based on combinations 3, 4, 6, and 7. Arctic Cat is not estopped from asserting invalidity grounds based on combinations 1, 2, and 5.
Read the full 8-page opinion on CourtListener, the free public archive maintained by the Free Law Project.