Summary
This Federal Circuit order denies a combined petition for panel rehearing and rehearing en banc filed by defendant-appellee Groupon, Inc. The accompanying opinions address whether collateral estoppel applies to Inter Partes Review (IPR) unpatentability determinations in subsequent district court infringement litigation, despite differing burdens of proof between the PTAB and federal courts. The majority concludes that collateral estoppel does not apply due to the shift from a preponderance of the evidence standard at the Board to a clear and convincing evidence standard in district court. The dissent argues that denying preclusive effect undermines the Leahy-Smith America Invents Act’s goal of providing an efficient alternative to district court invalidity litigation.
Topics
Practice areas
Questions Presented
- Whether the Federal Circuit should grant panel rehearing of its decision concerning the collateral-estoppel effect of an affirmed PTAB inter partes review determination on patentably indistinct claims asserted in district-court infringement litigation.
- Whether the Federal Circuit should rehear en banc whether an affirmed PTAB determination that patent claims are unpatentable has collateral-estoppel effect in subsequent district-court litigation involving patentably indistinct claims despite the different burdens of proof.
Key quotations
“The petition for panel rehearing is denied. The petition for rehearing en banc is denied.” (Document page 2)
“The Supreme Court has repeatedly reprimanded us for creating patent-specific departures from well-established principles.” (Document page 3)
“That a patent claim is invalid by a preponderance of the evidence does not mean it is also invalid by clear and convincing evidence.” (Document page 4)
“The panel decision reaches a contrary result. By not applying collateral estoppel to IPR decisions in later district court proceedings, the panel decision permits repeated litigation of a decided issue” (Document page 8)
Factual background
Kroy sued Groupon for infringement of thirteen of 115 claims in the '660 patent. In a separate inter partes review, the PTAB found twenty-one claims of the patent unpatentable as obvious, and the Federal Circuit affirmed. Kroy subsequently asserted fourteen different claims, some of which were virtually identical to, or combined limitations from, claims invalidated in the IPR.
Procedural history
Kroy sued Groupon in the District of Delaware for allegedly infringing thirteen claims of the '660 patent. The PTAB later determined in an inter partes review that twenty-one claims of the patent were unpatentable as obvious, and the Federal Circuit affirmed that determination. Kroy then amended its complaint to assert fourteen different claims, which Groupon argued were patentably indistinct from claims invalidated in the IPR. The district court and Federal Circuit panel rejected collateral estoppel based on the differing burdens of proof, and the court denied Groupon's requests for panel rehearing and rehearing en banc.