Jumping In Line: IPR and District Court Dance

Jumping In Line: IPR and District Court Dance

Molly Metz is a competitive soar-roper (5-time globe champ) and also an inventor of an progressive soar rope handle that permits tremendous velocity jumping liked by the two rivals and cross-in good shape freaks.  U.S. Patent Nos. 7,789,809 and 8,136,208.  There has been massive infringement since her patents issued 10-12 many years back.  Financing an infringement lawsuit is a little bit challenging, primarily for a overall-startup (micro entity) in a fairly compact current market.  Immediately after unsuccessful licensing discussions, her business Soar Rope Devices at some point sued Coulter Ventures (homeowners of Rogue Fitness) in 2018 for patent infringement.  Jump Rope Devices, LLC v. Coulter Ventures, LLC, 18-cv-731 (S.D. Ohio).  Coulter turned close to and petitioned for inter partes review (IPR).  IPR2019-00586, IPR2019-00587.  The PTAB granted the petitions and ultimately concluded that the statements ended up apparent in contrast towards the prior art.  The PTAB conclusion right here is relatively questionable as making use of hindsight bias in justifying the blend of prior references. Nonetheless, the Federal Circuit affirmed without viewpoint.

The Federal Circuit precedent is clear that all enforcement litigation should really end as shortly as the PTAB finds a declare unpatentable in an IPR/PRG and the perseverance is affirmed on attractiveness.  “That affirmance … has an immediate challenge-preclusive outcome 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 under, the Federal Circuit’s technique has some doctrinal holes.  Even now, it is precedent and the district court adopted that precedent–dismissing the circumstance and siding with the accused infringer.  Leap Rope appealed, but built distinct to the Federal Circuit that the purpose of its attraction was to modify the legislation and moved for summary affirmance of the district court’s judgment.

The IPR Certification eventually issued in August 2022 stating that the claims have been cancelled, but that time the district and appellate courts had presently been treating them as cancelled for months.

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Bounce Rope Systems’ case is now pending prior to the US Supreme Court docket on petition for writ of cetiorari and it argues that the Federal Circuit’s solution is in direct conflict with our law of issue preclusion.   Question presented:

Whether or not, as a make a difference of federal patent legislation, a willpower of unpatentability by the Patent Demo and Attractiveness Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel result on patent validity in a patent infringement lawsuit  in federal district courtroom. 

Soar Rope Petition.  

Although the Second Restatement of Judgments is not “law” as this kind of, the Supreme Court docket (and other courts) have repeatedly concluded that its statements do replicate the legislation.  One particular concept for promptly implementing the PTAB judgment is the doctrine of collateral estoppel (aka “issue preclusion”).   In XY, the Federal Circuit particularly concluded that collateral estoppel applies to quickly bar a patent infringement lawsuit at the time the PTAB finds the promises unpatentable and that perseverance is affirmed on appeal.  Judge Chen’s XY determination has quite a few issues. The fundamental concern is that the opinion fails to consider common limitations on the application of collateral estoppel, this kind of as differing expectations of evaluate.  1 vital case in point: the PTAB resolved obviousness primarily based on the lower typical of preponderance of the proof and the IPR Charm was decided on an even lessen considerable proof standard.  But, selections on all those very low expectations do not notify us regardless of whether the concern would be determined the exact way less than a greater typical of obvious and convincing evidence. Standard problem preclusion procedures prohibits this type of application.  See Grogan v. Garner, 498 U.S. 279 (1991).  But, the Federal Circuit the greater part only concluded that the patentee “had its working day in court” and now is certain by the result.  As I observed previously mentioned, in my watch the PTAB obviousness conclusion in this article is pretty weak in the way that it brings together disparate references and identifies the issue to be solved.  I mention this due to the fact it appears like a scenario the place the common of evaluate may well make a variance.

To be very clear, in my intellect all of this could possibly be a unique circumstance at the time the USPTO concerns its IPR certificate that truly cancels the promises.  At that position, the patent has been cancelled, but the functions in this article show up to be battling about the pre-cancellation interim interval.  One supplemental complication to this situation is the truth that obviousness is a issue of law, albeit a person primarily based on considerable subsidiary info.  Authorized decisions by the courts also become binding precedent (apart from their preclusive effect on the parties), but this place becomes sophisticated when the lawful determinations are primarily based upon distinctive underlying factual conclusions.


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