Collateral Estoppel May Not Apply When Claim Interpretation Standards Differ, PTAB Litigation Blog
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In its recent decision in RØDE Microphones, LLC et. al. vs. Zaxcom, Inc., the PTAB declined to apply collateral estoppel based on prior post-grant proceedings because the prior proceedings had applied a different standard of review. One ground raised by the petitioners was that the patent owner, Zaxcom, Inc., was collaterally estopped from disputing the presence of certain claim limitations and the obviousness of combining two references because these issues had been litigated in previous Inter Partes Reviews (IPRs). The PTAB disagreed, denying institution of Inter Partes Review on the basis (among other grounds) that collateral estoppel is not appropriate where a first IPR was decided under the Broadest Reasonable Interpretation (BRI) standard and a second IPR concerning the same patent is to be decided under the Phillips standard.
* Thane Bonnett, a member of the New Lawyer’s Group in Jones Day’s Pittsburgh Office, assisted in the preparation of this blog.
