A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Collateral Estoppel

I find nothing more pleasing than when the parties dispute the test to be applied. Facts are always messy and disputed, but an argument about the proper test is almost always elegant. Truly it is a beauty fit for a post.

Pictured, refinement
Pictured, refinement AI-Generated, displayed with permission

The particular test at issue in Azurity Pharms., Inc. v. Bionpharma Inc., C.A. No 21-1286-MSG (D. Del. Jan. 6, 2023) (Mem. Op.) whether new patent claims were the “same cause of action” for the purposes of claim preclusion.

The plaintiff argued that the well-worn rule that claim preclusion would apply to later patent claims if "the scope of the asserted patent claims in the two suits is essentially the same." Defendant, however, offered the novel argument that "two patent claims are 'essentially the same' if the second claim would have been obvious to one skilled in the art with knowledge of the first claim."

Judge Goldberg described apparent chain of reasoning thusly:

The parties’ divergent positions stem from the following sentence in the Federal Circuit’s SimpleAir decision: “In applying [the claim preclusion] standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same.” . . The underlined term “patentably indistinct” is also used in the doctrine of obviousness-type double patenting, where it means that “the [later] claims are obvious over the [earlier] claims.” . . . Bionpharma argues that by using ...

PTAB trailhead
PTAB trailhead Joshua Sukoff, Unsplash

During some research the other day, I came across the below order that Judge Noreika issued last summer.

A defendant had moved in limine to exclude three of the four asserted claims of a patent from trial, after it prevailed on those claims in an IPR. Easy motion, right?

No. Judge Noreika held that, under Federal Circuit precedent, collateral estoppel does not prevent plaintiff from asserting those claims at trial until the decision is final. And the decision is not final until the appeal is exhausted:

Federal Circuit case law suggests that an IPR decision does not have preclusive effect until that decision is either affirmed or the parties waive their appeal …

Whenever collateral estoppel comes up in a patent case, it usually generates some interesting discussion. Yesterday's decision from Judge Andrews in TQ Delta v. 2Wire is no different.

After the Federal Circuit reversed a PTAB determination of unpatentability on an unasserted claim, the plaintiff moved to estop the defendant from challenging the validity of two related claims in the district court litigation.

Judge Andrews concluded that summary judgment was inappropriate because the defendant adequately "explained how the differences between the [asserted claims] and [the adjudicated claim] alter the invalidity analysis[,]" but he also addressed an interesting question: Is a petitioner "fully represented" in an IPR when another petitioner is taking the laboring oar before the PTAB?

The defendant …

Sierra Nevada Mountains
Sierra Nevada Mountains Alistair Corden, Unsplash

The defendant in M2M Solutions LLC v. Sierra Wireless America, Inc., C.A. No. 14-1102-RGA (D. Del.), argued that the PTAB's previous invalidation of several claims of the plaintiff's patents in an IPR meant that the plaintiffs were collaterally estopped from asserting the validity of the remaining claims—the claims that were not invalidated—at the district court.

Defendant argued that:

  • The Federal Circuit has held that collateral estoppel applies to IPR proceedings generally;
  • The Supreme Court has held that agency decisions may have preclusive effects during later court proceedings; and
  • The Federal Circuit has extended collateral estoppel effects to unajudicated claims when there were no material differences between those and …