Case 2:20-cv-00319-JRG-RSP Document 614 Filed 04/28/22 Page 1 of 5 PageID #: 36636
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`Case No. 2:20-CV-00319-JRG-RSP
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`§§§§§§§§§
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`Automobile Association (“USAA”), Dkt. No. 511, the related proffer filed by Defendant PNC
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`Bank N.A. (“PNC”), Dkt. No. 561, and USAA’s Supplemental Brief Regarding PNC’s
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`Admissions as to MIL 16. Dkt. No. 599. Having considered the parties’ arguments, the Court
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`DENIES MIL 16.
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`I.
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`Background
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`In this suit, USAA alleges that PNC infringes U.S. Patent Nos. 10,482,432 (“‘432 Patent”),
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`10,621,559 (“’559 Patent”), 10,013,681 (“’681 Patent”), 10,013,605 (“’605 Patent”), 8,977,571
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`(“’571 Patent”), and 8,699,779 (“’779 Patent”). PNC sought inter partes review (“IPR”) of all six
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`asserted patents; however, the PTAB only instituted IPRs on three of the six patents: the ’571
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`Patent, IPR2021-01070, Paper 20 (P.T.A.B. Jan. 24, 2022); the ’779 Patent, IPR2021-01073, Paper
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`20 (P.T.A.B. Jan. 24, 2022); and the ’559 Patent, IPR2021-01077, Paper 21 (P.T.A.B. Jan. 24,
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`2022). In each IPR petition, PNC made the following stipulation: “if this IPR is instituted, it will
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`not advance the grounds that are raised or reasonably could have been raised in this IPR in the co-
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`pending district court proceeding.” Dkt. No. 561 at 1 n. 1.
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`1
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`UNITED SERVICES AUTOMOBILE
`ASSOCIATION,
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`v.
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`PNC BANK N.A.,
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`Plaintiff,
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`Defendant.
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`ORDER
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`Before the Court is motion in limine no. 16 (“MIL 16”) filed by Plaintiff United Services
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`Case 2:20-cv-00319-JRG-RSP Document 614 Filed 04/28/22 Page 2 of 5 PageID #: 36637
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`USAA, through its MIL 16, asks the Court to enforce the stipulation and preclude PNC
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`from raising grounds in this case that reasonably could have been raised in the IPR. Dkt. No. 511
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`at 11-12. Specifically, USAA argues that PNC could have raised in the IPR—and thus should be
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`precluded from raising here—invalidity arguments based on (1) written description or (2)
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`anticipation and/or obviousness using the following printed publications:
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`Id. at 511.
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`II.
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`Legal Standard
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`The Patent Act provides that a “petitioner in an inter partes review may request to cancel
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`as unpatentable 1 or more claims of a patent only a ground that could be raised under section 102
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`or 103 and only on the basis of patents and printed publications.” 35 U.S.C. § 311(b) (emphasis
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`added). “Accordingly, prior art ‘systems’ cannot be raised during IPR proceedings.” General
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`Access Solus. v. Sprint Spectrum LLC, No. 2:20-cv-00007-RWS, 2021 WL 5154085, *3 (E.D. Tex.
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`July 21, 2021) (citing Biscotti Inc. v. Microsoft Corp., No. 2:13-cv-1015-JRG-RSP, 2017 WL
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`2526231, at *8 (E.D. Tex. May 11, 2017)).
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`2
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`III. Analysis
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`a. Section 102 or 103 System Art
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`USAA argues that, because the list of prior art references above are publicly-available
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`patents or printed publications, these references could have been raised in the IPR and PNC should
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`be precluded from raising invalidity arguments under section 102 of 103 based on these references.
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`Dkt. No. 511 at 12. USAA further argues that the stipulation should preclude PNC from asserting
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`“system” references that are related to the printed publications. Dkt. No. 566 at 1. PNC, in its
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`proffer, argues that the system references it asserts in this case could not have been raised in the
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`IPRs and have relevant features not disclosed in related publications. Dkt. No. 561 at 4. Thus, the
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`issue between the parties is whether PNC is estopped from asserting a system reference in this case
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`based on the fact that the system reference has a related printed publication that could have been
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`raised in the IPR.
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`District courts are divided on the issue of whether a party is estopped from asserting a
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`system reference in a district proceeding when a related printed publication could have been raised
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`before the PTAB. See, e.g., Wasica Finance GmbH v. Schrader Int’l, Inc., 432 F.Supp.3d 448, 454
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`n.6 (D. Del. 2020) (collecting cases demonstrating the division among district courts). It is also
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`not clear on this record that the related publications fully describe all relevant features of the
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`asserted systems. Given the uncertainty in the law and the fact that this issue is presented via a
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`motion in limine, the Court declines to find that PNC is precluded from raising section 102 or 103
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`invalidity arguments based on these system references.
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`b. Section 112 Written Description
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`USAA argues that PNC should be precluded from making an invalidity argument based on
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`lack of written description because PNC could have included a ground challenging written
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`3
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`description given that “the PTAB is authorized to consider whether patent claims in a continuation
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`application are supported by the original parent application.” Dkt. No. 511 at 12 (citing Indivior
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`UK Ltd. v. Dr. Reddy’s Labs. S.A., 18 F.4th 1323, 1326-27 (Fed. Cir. 2021). Furthermore, USAA
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`cites examples of where it argues “PNC expressly relied on § 112 in its IPR.” Dkt. No. 566 at 10.
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`The Court finds that the stipulation does not preclude PNC from raising invalidity
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`arguments under § 112. First, the statute is clear that a “petitioner in an inter partes review may
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`request to cancel as unpatentable 1 or more claims of a patent only a ground that could be raised
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`under section 102 or 103 . . . .” 35 U.S.C. § 311(b). Therefore, invalidity arguments based on lack
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`of written description under § 112 are not a ground that could have been raised in an IPR.
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`Second, Indivior, upon which USAA relies to support its argument, did not hold that the
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`PTAB can consider whether a claim is valid based solely on written description. In Indivior, the
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`Federal Circuit affirmed the PTAB’s determination that certain challenged claims were anticipated
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`by a reference that became prior art due to the fact that claims in a continuation application could
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`not claim an earlier application filing date due to a lack of written description support in the earlier
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`application. Indivior, 18 F.4th at 1330. In essence, USAA seeks to expand this holding to estop
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`invalidity arguments under § 112; however, the Court declines to do so. Although PNC did argue
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`that certain claims lacked written description support in its IPR petitions, PNC did not argue that
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`the PTAB should find the claims invalid solely for a lack of written description. Because PNC
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`could not raise in the IPR lack of written description as a ground to invalidate the claims of the
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`Asserted Patents, PNC is not precluded from raising invalidity arguments under § 112, including
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`arguments related to a lack of written description arguments.
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`4
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`IV. Conclusion
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`MIL 16 states, “Motion to preclude PNC from raising any ground of invalidity at trial that
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`it could have raised before the PTAB.” Dkt. No. 579 at 6. PNC is not seeking to raise here the
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`grounds that the Court finds were covered by the stipulation in the IPR. Accordingly, MIL 16 is
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`denied.
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`5
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