Jumping In Line: IPR and District Court Dance

Jumping In Line: IPR and District Court Dance

Molly Metz is a aggressive leap-roper (5-time earth champ) and also an inventor of an revolutionary leap rope cope with that will allow tremendous velocity jumping beloved by both competitors and cross-fit freaks.  U.S. Patent Nos. 7,789,809 and 8,136,208.  There has been significant infringement considering that her patents issued 10-12 several years ago.  Financing an infringement lawsuit is a bit challenging, specially for a whole-startup (micro entity) in a quite compact sector.  Soon after unsuccessful licensing discussions, her business Bounce Rope Methods sooner or later sued Coulter Ventures (proprietors of Rogue Health) in 2018 for patent infringement.  Bounce Rope Programs, LLC v. Coulter Ventures, LLC, 18-cv-731 (S.D. Ohio).  Coulter turned all around and petitioned for inter partes review (IPR).  IPR2019-00586, IPR2019-00587.  The PTAB granted the petitions and inevitably concluded that the statements ended up evident in comparison against the prior art.  The PTAB final decision below is pretty questionable as implementing hindsight bias in justifying the combination of prior references. Nevertheless, the Federal Circuit affirmed without having impression.

The Federal Circuit precedent is clear that all enforcement litigation should really close as soon as the PTAB finds a assert unpatentable in an IPR/PRG and the perseverance is affirmed on charm.  “That affirmance … has an quick problem-preclusive influence on any pending or co-pending steps involving the patent.” XY, LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018).  As I generate under, the Federal Circuit’s method has some doctrinal holes.  Still, it is precedent and the district courtroom followed that precedent–dismissing the situation and siding with the accused infringer.  Soar Rope appealed, but manufactured crystal clear to the Federal Circuit that the purpose of its appeal was to adjust the regulation and moved for summary affirmance of the district court’s judgment.

The IPR Certificate at some point issued in August 2022 stating that the statements have been cancelled, but that time the district and appellate courts had by now been dealing with them as cancelled for months.

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Soar Rope Systems’ case is now pending prior to the US Supreme Court on petition for writ of cetiorari and it argues that the Federal Circuit’s strategy is in immediate conflict with our regulation of issue preclusion.   Question offered:

Whether, as a matter of federal patent legislation, a determination of unpatentability by the Patent Trial and Attractiveness Board in an inter partes assessment continuing, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit  in federal district court. 

Leap Rope Petition.  

Whilst the 2nd Restatement of Judgments is not “law” as these kinds of, the Supreme Court (and other courts) have repeatedly concluded that its statements do replicate the law.  A single principle for immediately making use of the PTAB judgment is the doctrine of collateral estoppel (aka “issue preclusion”).   In XY, the Federal Circuit particularly concluded that collateral estoppel applies to straight away bar a patent infringement lawsuit when the PTAB finds the statements unpatentable and that resolve is affirmed on attraction.  Decide Chen’s XY final decision has many difficulties. The basic issue is that the impression fails to consider regular restrictions on the application of collateral estoppel, these kinds of as differing standards of evaluate.  One particular key instance: the PTAB made the decision obviousness dependent upon the very low conventional of preponderance of the evidence and the IPR Enchantment was made the decision on an even reduce significant proof typical.  But, selections on those small benchmarks do not inform us whether the concern would be determined the very same way below a better regular of crystal clear and convincing proof. Common problem preclusion policies prohibits this kind of software.  See Grogan v. Garner, 498 U.S. 279 (1991).  But, the Federal Circuit the vast majority just concluded that the patentee “had its working day in court” and now is sure by the outcome.  As I pointed out previously mentioned, in my see the PTAB obviousness conclusion here is quite weak in the way that it brings together disparate references and identifies the challenge to be solved.  I point out this since it seems like a situation the place the regular of review may possibly make a variance.

To be distinct, in my head all of this may possibly be a diverse predicament when the USPTO concerns its IPR certification that actually cancels the promises.  At that position, the patent has been cancelled, but the get-togethers below appear to be fighting about the pre-cancellation interim period.  One supplemental complication to this case is the actuality that obviousness is a issue of law, albeit 1 based mostly upon substantial subsidiary facts.  Legal selections by the courts also grow to be binding precedent (apart from their preclusive impression on the get-togethers), but this region turns into difficult when the lawful determinations are based upon unique underlying factual conclusions.