In contrast, Kerry Timbers of Sunstein LLP, representing Ingenico, argued that it was reasonable for the jury to infer that users who were encouraged to download and use the upgrader would have done so. Timbers pointed out that detailed instructions were provided on M-Systems’ website, which would have made it clear how to use the upgrade.
The panel also discussed whether Ioengine’s prior Patent Trial and Appeal Board (PTAB) challenge should preclude Ingenico from using certain evidence regarding the sale or use of the upgrader. Judge Sharon Prost expressed skepticism about the relevance of the PTAB challenge, noting that the purpose of the Inter Partes Review (IPR) was to examine prior art and not to assess whether the product had been sold or used.
The judges also questioned whether Ingenico should be barred from presenting certain evidence due to estoppel in the PTAB proceedings, especially considering that some documents and witness testimony were not available during the review.
The patents at issue are U.S. Patent Nos. 9,059,969 and 9,774,703. The Federal Circuit panel, which includes Judges Dyk, Prost, and Hughes, reserved its decision. The case is Ingenico Inc. v. Ioengine LLC, case number 23-1367, in the U.S. Court of Appeals for the Federal Circuit.
