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 the adjudicated claims.
Applying those three principles, per defendants, if the asserted claims lack "material differences" compared to claims previously invalidated in an IPR, then a plaintiff is collaterally estopped from asserting their validity.
The Court didn't buy it:
The cases relied upon by Defendants articulate an underlying policy suggesting that collateral estoppel should be applied to uphold the finality of PTAB decisions. . . . But this policy of finality is not advanced where, as here, there is no question that the claims invalidated by the PTAB in the [previous] IPRs remain invalid. In this case, the jury may evaluate the validity of the Asserted Claims without disturbing the PTAB’s final written decisions in the IPR proceedings because the PTAB did not previously consider the Asserted Claims.
Judge Fallon also noted that the previous IPRs had taken place under the older "broadest reasonable interpretation" claim construction standard, inapplicable here, and had occurred pre-SAS (i.e., the PTAB was not obligated to address all challenged claims).
Even if it didn't pan out, it is a clever argument that I hadn't heard before, and the Court didn't quite reject it out of hand.
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