I wrote previously about oral argument in the Kroy v. Groupon case, where the Federal Circuit grappled with how to apply collateral estoppel from PTAB decisions in IPRs and PGRs where related unchallenged claims from the same patent are at issue in district court. As I wrote then, the appellant presented an interesting argument that the clear and convincing evidence standard should not apply since the patent office has revisited the patentability determination of related claims.
The Federal Circuit finally issued its opinion, and confirmed its view that collateral estoppel simply does not apply due to the different evidentiary standards. Unfortunately, the Federal Circuit dodged the appellant's strongest argument. This argument may not have been fully developed in the briefing (which took place before the Federal Circuit's previous opinion reaching a similar conclusion in Parkervision), but I am a bit surprised that the panel did not address it, especially given the length of time it took for the opinion to issue.
But the takeaways are clear—an accused infringer must challenge all patents in the patent office to take advantage of any collateral estoppel effects of a final written decision. Thus, defendants in district court litigation should be prepared to challenge every claim of any asserted patent within the one year time bar.
Not only will the defendant not be able to argue for collateral estoppel, the defendant likely will not be able to raise the IPR to a jury at all. See, e.g., Prolitec Inc. v. ScentAir Techs., LLC, No. CV 20-984-WCB, 2024 WL 341342, at *1 (D. Del. Jan. 30, 2024) (Bryson, J., sitting by designation) ("The invalidity of the unasserted claims is irrelevant to the issues in this case. And any effort to mitigate the risk of prejudice to Prolitec from disclosing that those claims have been held invalid would require excessive digression into the nature of inter partes review proceedings and the different standard of proof applied to invalidity inquires in inter partes review proceedings, as compared to district court proceedings. Accordingly, the jury will not be told that those claims have been held invalid."); Medtronic, Inc. v. Axonics Modulation Techs., Inc., No. 8:19-CV-02115-DOC-JDE, 2024 WL 3550482, at *5 (C.D. Cal. July 18, 2024) ("any probative value of discussion of the PTAB's invalidation of other claims of the patents-in-suit would be substantially outweighed by the dangers of unfair prejudice, jury confusion, and waste of time").
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