This Seems Absurd, But '

• Published date: 02 February 2023
• Subject Matter: Intellectual Property, Patent
• Law Firm: Marshall, Gerstein & Borun LLP
• Author: Mr Sandip H. Patel

Last year, a district court applied the doctrine of collateral estoppel to dismiss an infringement suit after the Patent Trial and Appeal Board decided to cancel the asserted patent's claims in an inter partes review. In the ensuing appeal of the court's decision, the Federal Circuit granted the patent owner's (Jump Rope's) unopposed motion for summary affirmance. Jump Rope Sys., LLC v. Coulter Ventures, LLC, Appeal 22-1624 (Fed. Cir. June 28, 2022). Jump Rope presented the unopposed motion after the Federal Circuit denied its motion that the court go en banc. Jump Rope had sought a determination by the court as a whole that parallel civil litigation seeking to enforce those canceled claims was not moot and could proceed, potentially to an infringement judgment and consequent remedy. Jump Rope has since presented the same argument to the Supreme Court in a petition for a writ of certiorari. Brief of Petitioner, Jump Rope Sys., LLC v. Coulter Ventures, LLC, Sup. Ct. Dkt. 22-298 (Sept. 26, 2022).

The argument seems absurd, but in the petition, Jump Rope asserts a conflict exits between the Federal Circuit's decision in XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018) (applying collateral estoppel to a factually similar situation), and the Supreme Court's decisions in Grogan v. Garner, 498 U.S. 279, 284-85 (1991) (determining that collateral estoppel may not apply where two proceedings involve different standards of proof on common factual findings), and B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 154 (2015) (stating that, for collateral estoppel purposes, similar legal issues are not identical if different legal standards apply). The Court's review is necessary, according to the petition, to overrule XY, on which the district court relied. Amicus briefs were filed encouraging the Court's review, complaining estoppel should not apply because of the different standards of proof in Board and court proceedings, even though that difference rarely matters in assessing what a prior art publication discloses.

XY (discussed in detail here) concerned assertions of patent infringement and patent invalidity in federal court. During the pendency of that litigation, the Board had canceled the patent claims in a final written decision in an inter partes review. That decision was affirmed by the Federal Circuit in a separate appeal on the same day it issued its decision in XY. Said the court, its "affirmance renders final a judgment on...