PTAB: Unidirectional Language Of AIA Estoppel Dooms Common-Law Claim Preclusion Argument Based On District Court's Final Judgment Of No Invalidity

• Published date: 25 July 2023
• Law Firm: Akin Gump Strauss Hauer & Feld LLP
• Author: Ms Caitlin Olwell, Rubén Mu'oz and Ange Christiani

The Patent Trial and Appeal Board has denied a patent owner's motion to terminate an inter partes review (IPR) proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim preclusion inapplicable as a basis for termination.

Patent Owner moved to terminate an IPR after Petitioner successfully joined the proceeding, which was originally filed by another party. Because Petitioner had unsuccessfully litigated invalidity of the patent in district court, Patent Owner argued that termination was proper on a theory of claim preclusion. The district court had issued a final judgment of no invalidity after Patent Owner and Petitioner had fully and fairly argued their cases. Petitioner's joinder in the IPR, Patent Owner alleged, was nothing more than a collateral...