Palomar Technologies Inc. v. MRSI Systems LLC

Crowell & Moring won a first-ever bench trial on whether estoppel based on an earlier inter partes review before the USPTO’s Patent Trial and Appeal Board applies to new prior art references asserted in a district court litigation.

Chief Judge Saylor of the U.S. District Court for the District of Massachusetts held in favor of Crowell & Moring’s client MRSI Systems, LLC that IPR estoppel does not preclude the two new prior art references not asserted in the earlier inter partes review proceeding.

Chief Judge Saylor’s 32-page 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. Shortly after, Plaintiff Palomar Technologies, Inc. moved for summary judgment by invoking the new IPR-estoppel standard. Chief Judge Saylor held that summary judgment could not be granted based on the two references at issue and instead ordered a bench trial on whether MRSI actually knew of the references (i.e., subjective prong), and whether a skilled searcher reasonably could have discovered the references through a diligent search (i.e., objective prong).

The Crowell & Moring team 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.

The Crowell & Moring team that represented MRSI in this matter included partner Brian Paul Gearing, Ph.D. (Picture), counsels Ali Tehrani and Zach Ruby, and associate Michelle Chipetine.

Sheehan Phinney Bass & Green PA acted as co-counsel with a team including Robert R. Lucic, Peter A. Nieves, and James P. Harris.

Involved fees earner: Michelle Chipetine – Crowell Moring LLP; Brian Paul Gearing – Crowell Moring LLP; Zach Ruby – Crowell Moring LLP; Ali Tehrani – Crowell Moring LLP;

Law Firms: Crowell Moring LLP;

Clients: MRSI Systems LLC;


Author: Ambrogio Visconti