Leaping In Line: IPR and District Courtroom Dance

Molly Metz is a aggressive jump-roper (5-time world champ) and in addition an inventor of an modern soar rope deal with that enables tremendous pace leaping liked by each rivals and cross-fit freaks.  U.S. Patent Nos. 7,789,809 and eight,136,208.  There was large infringement since her patents issued 10-12 years in the past.  Financing an infringement lawsuit is a bit difficult, particularly for a total-startup (micro entity) in a reasonably small market.  After failed licensing discussions, her firm Leap Rope Techniques ultimately sued Coulter Ventures (house owners of Rogue Health) in 2018 for patent infringement.  Leap Rope Techniques, LLC v. Coulter Ventures, LLC, 18-cv-731 (S.D. Ohio).  Coulter rotated and petitioned for inter partes evaluate (IPR).  IPR2019-00586, IPR2019-00587.  The PTAB granted the petitions and ultimately concluded that the claims have been apparent in contrast in opposition to the prior artwork.  The PTAB determination right here is pretty questionable as making use of hindsight bias in justifying the mixture of prior references. Nonetheless, the Federal Circuit affirmed with out opinion.

The Federal Circuit precedent is evident that every one enforcement litigation ought to finish as quickly because the PTAB finds a declare unpatentable in an IPR/PRG and the dedication is affirmed on attraction.  “That affirmance … has a right away issue-preclusive impact on any pending or co-pending actions involving the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).  As I write beneath, the Federal Circuit’s strategy has some doctrinal holes.  Nonetheless, it’s precedent and the district courtroom adopted that precedent–dismissing the case and siding with the accused infringer.  Leap Rope appealed, however made clear to the Federal Circuit that the objective of its attraction was to alter the legislation and moved for abstract affirmance of the district courtroom’s judgment.

The IPR Certificates ultimately issued in August 2022 stating that the claims have been cancelled, however that point the district and appellate courts had already been treating them as cancelled for months.

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Leap Rope Techniques’ case is now pending earlier than the US Supreme Courtroom on petition for writ of cetiorari and it argues that the Federal Circuit’s strategy is in direct battle with our legislation of concern preclusion.   Query offered:

Whether or not, as a matter of federal patent legislation, a dedication of unpatentability by the Patent Trial and Attraction Board in an inter partes evaluate continuing, affirmed by the Federal Circuit, has a collateral estoppel impact on patent validity in a patent infringement lawsuit  in federal district courtroom. 

Leap Rope Petition.  

Though the Second Restatement of Judgments shouldn’t be “legislation” as such, the Supreme Courtroom (and different courts) have repeatedly concluded that its statements do replicate the legislation.  One concept for instantly making use of the PTAB judgment is the doctrine of collateral estoppel (aka “concern preclusion”).   In XY, the Federal Circuit significantly concluded that collateral estoppel applies to right away bar a patent infringement lawsuit as soon as the PTAB finds the claims unpatentable and that dedication is affirmed on attraction.  Decide Chen’s XY determination has quite a few issues. The fundamental concern is that the opinion fails to contemplate customary limitations on the appliance of collateral estoppel, similar to differing requirements of evaluate.  One key instance: the PTAB determined obviousness primarily based upon the low customary of preponderance of the proof; and the IPR Attraction was selected a good decrease substantial proof customary.  However, selections on these low requirements don’t inform us whether or not the difficulty could be determined the identical method underneath a better customary of clear and convincing proof. Commonplace concern preclusion guidelines prohibits this type of software.  See Grogan v. Garner, 498 U.S. 279 (1991).  However, the Federal Circuit majority merely concluded that the patentee “had its day in courtroom” and now could be certain by the end result.  As I famous above, for my part the PTAB obviousness determination right here is sort of weak in the best way that it combines disparate references and identifies the issue to be solved.  I point out this as a result of it looks like a case the place the usual of evaluate may make a distinction.

To be clear, in my thoughts all of this could be a special scenario as soon as the USPTO points its IPR certificates that truly cancels the claims.  At that time, the patent has been cancelled, however the events right here seem like combating in regards to the pre-cancellation interim interval.  One further complication to this case is the fact that obviousness is a query of legislation, albeit one primarily based upon substantial subsidiary information.  Authorized selections by the courts additionally grow to be binding precedent (aside from their preclusive affect on the events), however this space turns into difficult when the authorized determinations are primarily based upon distinctive underlying factual conclusions.


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