A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: collateral-estoppel

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 …