The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently reviewed a new issue not previously before it regarding whether a party was estopped from presenting invalidity arguments in district court after the Patent Trial and Appeal Board (“Board”) found the same or similar patents not-unpatentable. Previously, the Federal Circuit had only found that where the Board finds a patent claim unpatentable, collateral estoppel applies because the claims no longer exist.
In the IPR proceedings, defendant’s burden of proof was only a preponderance of the evidence. To prevail on its invalidity contentions in the district court, however, defendant had to meet a higher burden: clear and convincing evidence. Defendant had not faced, let alone overcome, this burden previously. Thus, no finding of the Board should estop the parties from presenting evidence on the unresolved question of whether defendant is able to prove the capabilities of the prior art apparatus (and the other components of its invalidity contention) by clear and convincing evidence.
In a precedential opinion, ParkerVision, Inc. v. Qualcomm Incorporated, et al., Case No. 2022-1755, 2024-2221 (Fed. Cir. Sept. 6, 2024), the Federal Circuit found that an unpatentability decision in an IPR proceeding did not collaterally estop a patentee from making validity arguments regarding separate, related claims in district court litigation. The Court also found that a previous finding of infringement did not estop defendant from arguing non-infringement on claims that are similar but not identical.
Background
There are two related cases at issue alleging different patents. In the first case (“ParkerVision I”), the Federal Circuit affirmed a judgment as a matter of law (“JMOL”) of non-infringement. In the second infringement case (“ParkerVision II”), ParkerVision filed suit against Qualcomm on different but related patents. In ParkerVision II, the district court granted Qualcomm’s motion for summary judgment of non-infringement and granted Qualcomm’s motions to exclude ParkerVision’s evidence ParkerVision had proposed to present through its invalidity and infringement reports. ParkerVision appealed the ParkerVision II findings.
In the ParkerVision II case, ParkerVision asserted U.S. Patent Nos. 7,218,907 (the “’907 patent”) and 6,091,940 (the “’940 patent”). The ’907 patent is in the same family and relates to the same technology as patents asserted in the ParkerVision I case. Qualcomm filed several petitions for inter partes review (“IPR”) on ParkerVision’s ’940 patent. ParkerVision also sued Qualcomm at the U.S. International Trade Commission (“ITC”). Both the district court action and ITC action were stayed pending the result of the IPR.
When the district court lifted the stay in the ParkerVision II action, it instructed the parties to “address whether any patents and claims brought in the instant litigation are affected by ParkerVision I.” Qualcomm filed a motion for partial summary judgment alleging that ParkerVision should not be able to assert its receiver claims based on collateral estoppel because they were “the same concept” as limitations that were found not to infringe in the ParkerVision I action. These claims were called the “receiver claims.” The district court denied this motion because Qualcomm failed to “show there is no material difference between the patents-at issue in ParkerVision I and the claims now asserted by ParkerVision” in the ParkerVision II action. The district court found that the claims in the ParkerVision I case had different claim limitations than the ’907 patent claims.
Later, Qualcomm filed Daubert motions, which the Court granted, finding the Board’s invalidation of the challenged apparatus claims of the ’940 patent, collaterally estopped ParkerVision from relitigating characteristics of the prior art reference on which Qualcomm’s invalidity contentions rested. Qualcomm filed another summary judgment motion of non-infringement contending that ParkerVision is collaterally estopped from asserting Qualcomm infringes the receiver claims of the ’907 and ’940 patents. The district court granted this motion finding non-infringement because “there is no material dispute over whether the claims at issue here are materially similar to those in ParkerVision I,” in which the Federal Circuit affirmed the judgment of non-infringement.
Collateral Estoppel – Preclusion of ParkerVision’s Expert From Offering Validity Testimony Based on the IPR Findings
The Board made certain findings related to the ’940 patent–finding the apparatus claims invalid as obvious but failing to find the method claims unpatentable. The district court found that the collateral estoppel effect of having lost a substantial part of the IPRs meant ParkerVision was precluded from asking the court or jury to reach different conclusions than the Board with respect to the method claims. The Federal Circuit disagreed with the district court and reversed the order excluding the opinions of ParkerVision’s validity expert. Slip op. at 29.
The Federal Circuit noted that collateral estoppel is “subject to certain well-known exceptions.” For instance, where “the second action involves application of a different legal standard, even though the factual settings of both suits may be the same.” Slip op. at 25 (citing B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 154 (2015)).
In the IPR proceedings, Qualcomm’s burden of proof was only a preponderance of the evidence. Slip op. at 25 (citing Google LLC v. IPA Techs. Inc., 34 F.4th 1081, 1085 (Fed. Cir. 2022)). However, in district court, Qualcomm had to meet a higher burden: clear and convincing evidence. Id. (citing Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 102 (2011)). Because Qualcomm had not met this burden previously in proving the prior art invalidated ParkerVision’s patents, it could not be estopped from trying to do so in the district court. The Federal Circuit noted this is different than its previous findings where a finding of invalidity at the district court or Board “has a collateral estoppel effect on all pending or co-pending actions” because the claim no longer exists. Id. (citing XY, LLC v. Trans Ova Genetics, 890 F.3d 1294 (Fed. Cir. 2018)). In the instant litigation, the Board found the claims not-unpatentable. Therefore, the claims are found presumptively valid and can only be found invalid in district court litigation by clear and convincing evidence.
Collateral Estoppel – Are the Claims at Issue Similar or Identical for Infringement
The Federal Circuit applied the Eleventh Circuit collateral estoppel law where the following four elements need to be satisfied:
the issue at stake must be identical to the one involved in the prior litigation; (2) the issue must have been actually litigation in the prior suit; (3) the determination of the issue in the prior litigation must have been a critical and necessary part of the judgment in that action; and (4) the party against whom the earlier decision is asserted must have had a full and fail opportunity to litigate the issue in the earlier proceeding.
Slip op. at 14 (citing CSX Transp., Inc. v. Bhd. Of Maint. Or Way Emps., 327 F.3d 1309, 1317 (11th Cir. 2003)). The Federal Circuit applied Federal Circuit law to substantive issues of patent law, such as determining when a particular claim is the same or separate from another claim. The parties agreed that all but the first of the elements were satisfied.
The Federal Circuit determined that whether the claims were similar or identical required claim construction, and the district court did not undertake claim construction or determine the scope of the claims, but rather relied on Qualcomm’s expert reports, which it found unrebutted. The Federal Circuit also determined that Qualcomm’s expert reports were not unrebutted, because ParkerVision’s expert repeatedly opined that there are material differences in the scope of the claims from the two cases. Slip op. at 15-16.
Moreover, in ParkerVision I, the Federal Circuit concluded that a down-conversion of a signal had to occur at or after the capacitor in affirming its judgment of non-infringement. The ParkerVision II case involves the same accused products with different claims. None of the asserted receiver claims of the ’907 or ’940 patents expressly included a generating limitation or appears to include a requirement of the down-converted signal occur at or after the capacitor. Therefore, the claims in the ParkerVision II case could be infringed even if the down-conversion occur before the capacitor. Therefore, the Court found that there is at least a dispute as to the scope of the asserted receiver claims of the ’907 and ’940 patents and summary judgement of non-infringement based on collateral estoppel was not warranted. The Court remanded for the district court to undertake any necessary claim construction and then assess if there were any differences in claim scope. Slip op. at 20-21.
*This article does not address the Federal Circuit’s findings that district court erred in excluding the testimony of its infringement expert.