PTAB Provides Infringers A Second Chance, Ruling That Claim Preclusion Does Not Apply To IPR Proceedings

• Jurisdiction: United States,Federal
• Author: Mr Ryan Fitzgerald and Mark Supko
• Law Firm: Crowell & Moring
• Published date: 27 April 2023

The PTAB ruled last week that the common law doctrine of claim preclusion only applies at the PTAB in one direction, holding that Congress did not intend for an adverse district court judgment to block a party from pursuing a subsequent inter partes review challenge.

As background, in April 2019, VLSI sued Intel for infringement of U.S. Patent No. 7,725,759 ("the '759 Patent) in the Western District of Texas. Ten months later, in February 2020, Intel filed an inter partes review petition challenging the validity of the patent. The PTAB denied institution in August 2020 under Fintiv. The litigation proceeded to trial in March 2021 and the jury sided with VLSI, finding the '759 Patent valid and infringed, and awarding VLSI more than $2 billion in damages. The district court entered final judgment on May 10, 2022.

Shortly after the jury verdict, but before final judgment was entered, Intel saw another opportunity to invalidate VLSI's patent when, in June 2021, OpenSky Industries, LLC filed an IPR petition challenging several claims of the '759 Patent, including the claims Intel had been found to...