Eric E. Bensen

Prior Agency Actions

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“It is well established that collateral estoppel applies to IPR proceedings.” 

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• Google LLC v. Hammond Dev. Int'l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (IPR petitioner had earlier successfully challenged another of patentee’s claims in a related patent that shared the same specification; although the wording of that and the later challenged claim was somewhat different, the difference was not material to the patentability determination; consequently, by operation of collateral estoppel, the later challenged claim was invalid) (reversing in part and affirming in part).

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“One [exception to collateral estoppel] is where the second action involves application of a different legal standard, even though the factual setting of both suits may be the same.”

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• Parkervision, Inc. v. Qualcomm Inc., 116 F.4th 1345, 1361, 2024 U.S.P.Q.2D (BNA) 1607 (Fed. Cir. 2024) (internal quotations omitted) (defendant had established the unpatentability of certain claims of the patents at issue in an IPR by proving the capabilities of a prior art apparatus; however, because of the lower burden of proof in an IPR proceeding, the patentee was not estopped from challenging defendant’s evidence of the apparatus’ capabilities in defense of the validity of the other claims in the patents in federal court where defendant had to meet a higher burden of proof to establish invalidity) (reversing the lower court’s decision to preclude patentee’s expert testimony).

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“[A] prior final written decision of the [PTAB] of unpatentability on separate patent claims reached under a preponderance of the evidence standard cannot collaterally estop a patentee from asserting other, unadjudicated patent claims in district court litigation.”

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• Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376, 1381, 2025 U.S.P.Q.2D (BNA) 246 (Fed. Cir. 2025) (plaintiff alleged infringement of several claims that were not the subject of an earlier IPR resulting in other claims of the same patent being invalidated; even if, as the lower court concluded, the asserted claims were immaterially different from the invalidated claims, plaintiff was not collaterally estopped from asserting them because the clear and convincing evidence standard for proving invalidity in a district court is higher than the preponderance of the evidence standard applied by the PTAB) (reversing and remanding lower court’s grant of a motion to dismiss).