Sorting Cases: Applying Collateral Estoppel Mid-Stream

by Dennis Crouch

XY, LLC v. Trans Ova Genetics, L.C. (Fed. Cir. 2018).

The break up choice in this article reveals an important dispute involving Federal Circuit judges over the affect of AIA trials on pending litigation.  In this scenario, XY’s six patents in go well with relate to the sorting of semen by gender (utilized for farm animal breeding).  My dialogue underneath focuses on only a single of the patents that was very first enforced by the district court docket but later on cancelled by a PTAB motion.

Background: Just after their patent license offer went bust, XY sued Trans Ova for infringement and a jury located that the patents had been not invalid and also willfully infringed. (The district court docket also decided agreement and antitrust concerns).  Following ultimate judgment from the district court docket siding with the patentee, the Patent Trial and Charm Board (PTAB) issued its ultimate judgment obtaining two of the aforementioned infringed statements to be unpatentable. Claims 1 and 3 of U.S. Patent No. 7,195,920.  That PTAB choice was affirmed nowadays without the need of feeling by the exact 3-decide panel of Judges Chen, Dyk, and Newman.

On attraction, a single query for the court docket was the affect of the PTAB and Federal Circuit choice invalidating the patent.  The court docket located it moot — holding that the parallel Federal Circuit invalidation must be specified speedy problem preclusive impact. The court docket writes:

Collateral Estoppel: As a threshold make any difference, we need to have not tackle Trans Ova’s invalidity arguments as to the Freezing Patent statements in perspective of our affirmance nowadays in a individual attraction invalidating these exact statements, which collaterally estops XY from asserting the patent in any even further proceedings. . . .

That affirmance renders ultimate a judgment on the invalidity of the Freezing Patent, and has an speedy problem preclusive impact on any pending or co-pending actions involving the patent. . . .

We do not obtain, as the Dissent states, that “in the event of conflict the administrative agency’s decision ‘moots’ the district court’s choice.” Dissent at 6. Relatively, we obtain that an affirmance of an invalidity obtaining, whether from a district court docket or the Board, has a collateral estoppel impact on all pending or co-pending actions. This court docket has long used the Supreme Court’s holding in Blonder-Tongue to use collateral estoppel in mooting pending district court docket conclusions of no invalidity centered on intervening ultimate choices of patent invalidity.

Closing Determination vs Affirmance of Closing Determination: Be aware in this article that the ultimate paragraph is rather perplexing due to the fact it appears to condition two individual principles – (1) that affirmance of an invalidity obtaining [by the Federal Circuit] creates collateral estoppel on the problem of validity and also (2) that a ultimate choice of patent invalidity moots pending district court docket conclusions of no invalidity.  This begs the query of what would be the good outcome if this scenario had been decided immediately after the IPR choice cancelling the statements but right before selecting the end result of this attraction.  When the court docket acknowledges the prospective problem – I count on that in most predicaments it would coordinate the appeals.

Preserving the Situation for Charm: In this scenario, the defendant appealed its invalidity loss — a single query is whether or not the that attraction was needed to overturn the infringement verdict.  In dicta, the court docket implies in this article that the justification for the choice is that “a defendant really should not have to carry on defending a go well with for infringement of an adjudged invalid patent.”  (Interior rates of excluded).  For this stage, however, the court docket relied only upon statements from prior non-precedential Federal Circuit choices. See U.S. Ethernet Innovations, LLC v. Tex. Instruments Inc., 645 F. App’x 1026, 1028–30 (Fed. Cir. 2016) and Translogic Tech., Inc. v. Hitachi, Ltd., 250 F. App’x 988 (Fed. Cir. 2007).

The majority feeling was composed by Judge Chen and joined by Judge Dyk.

Writing in partial dissent, Judge Newman argues that collateral estoppel really should not use in this predicament.  The dissent describes that collateral estoppel is not automated, is bewildered by the different legal benchmarks at perform in this article, really should be handled with caution when asserted by a non-mutual get together (the defendant in this article was not portion of the IPR), really should be used with caution when functioning involving an administrative company and the courts, and unquestionably really should not be decided sua sponte – without the need of request from both get together, briefing, or arguments on the issue. “Collateral estoppel is not issue to automated imposition without the need of affording any possibility for get together dialogue.”

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