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 argued that it was not "fully represented" because "it was not a party to the proceeding and its parent company . . . only had a limited role in the prior IPR." Thus, because the defendant's parent company "was not an active participant in the IPR proceeding," it claimed that its "interests were not fully represented."
Although the defendant ultimately won the motion, Judge Andrews rejected this argument outright:
While ARRIS assumed a "limited 'understudy' role," that did not prevent it from adequately representing its (and Defendant's) interests. ARRIS stated that its petition raised the "same grounds for unpatentability as does Cisco's petition" and that it had no new arguments. . . . Therefore, ARRIS agreed with the grounds Cisco asserted at the IPR proceeding and did not have any new arguments to add. Despite being an "understudy" petitioner, ARRIS was adequately represented at the prior IPR proceeding, as Cisco raised the same grounds and arguments that ARRIS asserted in its IPR petition prior to joining Cisco's IPR. . . . As ARRIS, Defendant's parent, was adequately represented at the prior IPR proceeding, Defendant was fully represented in the prior action as well.
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