JTIP Blog

A. Introduction

The dipartite structure of the American patent system, comprising the U.S. Patent and Trademark Office and the federal Article III court system, leads to interesting interactions between rulings made in each of the distinct subsystems. This is especially relevant to the patent system in the context of claim construction. Moreover, because the Federal Circuit has sole jurisdiction over patent cases, their unique frameworks for analyzing procedural and substantive legal issues lead to facially surprising outcomes. Two recent cases applying Federal Circuit precedent illustrate this in relation to the judicial application of collateral estoppel, or issue preclusion.

B. The Broad Strokes of Issue Preclusion

Issue preclusion stands for the idea that, “[o]nce a matter [has been] properly litigated, that should be the end of the matter for the parties to that action.” It is similar, in that sense, to res judicata, but issue preclusion has a distinct scope. Issue preclusion applies where the issue had been previously, properly litigated and the decision on the matter was material to the case in which it was decided. The more important distinction, however, between issue preclusion and res judicata is that issue preclusion does not require “mutuality” between the parties in the case where issue preclusion is being asserted. In other words, the second litigation does not need to be between the same two parties, as is the case with res judicata.

The Federal Circuit, the relevant circuit for this discussion, recognizes exceptions to issue preclusion. The exception with the most interaction with rulings from the PTAB (the appeals board of the USPTO) is that issue preclusion does not apply where the subsequent proceeding applies “a different legal standard.” This was the deciding exception in the two cases that help us understand the implications of this Federal Circuit exception to issue preclusion.

C. Standard Disparities Between PTAB and Article III Courts

The USPTO applies its own particular standards during PTAB proceedings. These are statutorily defined, further interpreted in federal regulations, and expounded upon from the Manual for Patent Examination and Procedure. For the purpose of understanding how PTAB rulings interact with decisions of Article III courts, we will focus primarily on rules relevant to claim construction and patent validity.

• Claim Construction in Front of the PTAB and the Courts

In evaluating the validity of patent claims, the USPTO applies a “broadest reasonable interpretation” when constructing, or determining the meaning of, the claims of the patent under examination. This is relevant during initial examination of the patent by the USPTO’s examiners and on appeal of a final rejection to the PTAB. In other words, the USPTO and PTAB look for the broadest interpretation of the language of the claims that remains reasonable. The courts, on the other hand, apply the Phillips Standard, which “constructs” the claim as one of ordinary skill in the field would understand it in light of the specification and prosecution history ­any record produced during the original examination of the patent.

This was a potential factor in the rejection of the application of collateral estoppel in our first case, DDR Holdings, LLC v. Priceline.com LLC. Interestingly, it was not a deciding factor in the disposition of the question of issue preclusion. As issue preclusion is an affirmative defense, it must be raised in the answer a complaint. DDR Holdings, however, failed to raise issue preclusion until their brief. The court explicitly notes that this is fatal, in and of itself, but nevertheless evaluates the merits of the request for collateral estoppel. In this case, DDR Holdings sought to estop Priceline from arguing that “merchants providing a service” were not merchants covered under DDR Holdings’ ‘399 patent’s definition of a merchant. Priceline was arguing this based on the prosecution history of the ‘399 patent. During prosecution and initial examination, DDR Holdings had deleted any reference of “providing services” from the definition of merchant within the specification. DDR Holdings had, however, incorporated this earlier, service-inclusive definition, by incorporating the containing preliminary application by reference.

In light of this, the PTAB, during Inter Partes Review initiated by Priceline over the asserted ‘399 patent, found that the portion of the specification nominally defining “merchant” was not, in fact, definitional. Instead, the PTAB applied the broadest reasonable interpretation standard during the Inter Partes Review and found “merchants” to include “producers, distributors, or resellers of the goods or services to be sold.” In other words, the specification did not limit “merchants” because the PTAB did not find sufficient evidence to show that DDR Holdings intended to define “merchant” restrictively via the specification. As such, the broadest reasonable interpretation of “merchant” within the claims would necessarily include purveyors of services.

With this particular ruling, DDR Holdings asserted that the matter had been properly litigated and, therefore, Priceline should be collaterally estopped from asserting their differing construction of merchants in the case before the court. The court noted, however, that it was not bound by the decision of the PTAB because that decision applied the “Broadest Reasonable Interpretation” instead of the court’s Phillips Standard. Because the Federal Circuit, and by extension the district court, must apply the Phillips Standard, issue preclusion could not apply. In other words, Priceline could assert its construction that would exclude “service” providing from the ‘399 patent’s definition of merchants.

Under this standard, the Federal Circuit found the discussion in the ‘399 patent’s specification of “merchant” to be definitional. Furthermore, the Federal Circuit found that the deletion of “services” between the provisional and non-provisional patent to be material and, under the Phillips Standard, found it to explicitly exclude services from the ‘399 claim coverage.

• Inter Partes Review and Collateral Estoppel

The second case, Kroy IP Holdings, LLC v. Groupon, Inc., is more narrowly focused on challenges to invalidity, in the form of Inter Partes Review, before the PTAB. During an IPR proceeding, the PTAB applies a preponderance of evidence standard when determining if a patent is valid or invalid. This is at odds with the standard applied in Article III courts, which instead apply the clear and convincing evidence standard.

In Kroy, Groupon had previously initiated IPR of patents asserted by Kroy IP Holdings. In the IPRs, Groupon prevailed and the asserted patents were found to be invalid. The district court then held that Kroy IP Holdings was collaterally estopped from re-litigating the patent validity presented. After Groupon’s motion to dismiss was granted, Kroy IP Holdings sought appeal, arguing that, given the differing standards, collateral estoppel should not have applied, among other things.

The Federal Circuit ultimately decided in Kroy IP Holding’s favor. First, they noted that, on its face, collateral estoppel—or issue preclusion—could not apply here. This finding was the result of the lowered standard of proof required in front of the PTAB versus that required in front of the court.

The court then addressed a further exception to this exception. Groupon had argued, in favor of precluding Kroy IP Holding form re-litigating patent validity, that the Federal Circuit’s previous decisions stated that PTAB invalidity findings were themselves preclusive. The Federal Circuit disagreed and clarified. The Court explained that PTAB findings on validity only became preclusive once the Federal Circuit had affirmed them. A natural result of this, as described by the court, is that claims found invalid by the PTAB remain in existence until the decision is appealed to the Federal Circuit and affirmed or a district court, applying their heightened standard, independently finds the claims invalid. In other words, only once patent validity has been evaluated under the clear and convincing standard, either on appeal to the Federal Circuit or as a matter of first impression in front of a district court, does the disposition gain preclusive effect.

Because the District Court based its dismissal on the preclusive effect of the PTAB findings and said PTAB findings had not been appealed to the Federal Circuit, the court reversed and remanded.

 D. Conclusion

The cases discussed above illustrate a distinct challenge that faces the dipartite American patent system. Because of the differing standards applied by the two bodies that hold sway over patent litigation, parties can be given a functional second bite at the apple when moving between the USPTO and Article III courts. This system is ultimately imperfect and creates duplicative litigation, as demonstrated in both of these cases. This is counterbalanced by the increased efficiency the USPTO and PTAB ostensibly provide to the American intellectual property system. In summary, because of the structure of the American patent system, issue preclusion—or collateral estoppel—remains difficult to invoke in patent litigation.

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