In IPR Appeal, Federal Circuit Holds That Collateral Estoppel Arises From Prior Claim-Construction Ruling
On March 13, 2018, the United States Court of Appeals for the Federal Circuit (CAFC) ruled that a party was collaterally estopped to challenge a Patent Trial and Appeal Board (PTAB) ruling on a claim-construction issue. The estoppel arose from a previous IPR decision concerning a related patent. Nestle USA, Inc. v. Steuben Foods, Inc., appeal no. 2017-1193.
Nestle USA, Inc. (Nestle) requested inter partes review (IPR) of a patent owned by Steuben Foods, Inc. (Steuben). During the IPR, the PTAB construed the term “aseptic.” Nestle disagreed with the construction and appealed the resulting PTAB decision to the CAFC, which vacated the PTAB ruling and remanded for further proceedings.
The CAFC based its ruling on the outcome of a previous IPR concerning a related patent. In that previous IPR, the term “aseptic” was also construed, first by the PTAB, and ultimately by the CAFC. In its opinion in the current case, the CAFC did not apply substantive claim-construction law. Instead, the CAFC found that the earlier decision collaterally estopped Nestle from challenging the “aseptic” claim construction in the second IPR.
The CAFC observed, “[i]t is undisputed that the claims at issue in the two appeals use the term ‘aseptic’ (or its related variation ‘aseptically disinfecting’) in a similar fashion,” and that “neither party has pointed to any material difference” in the intrinsic evidence connected to the two patents “that would give rise to claim construction issues in this appeal different from those raised in the prior appeal.” The CAFC therefore concluded that the issues presented were the same, and that “collateral estoppel protects Nestle and obviates the need to revisit an issue that was already resolved against Steuben Foods.”
The CAFC opinion makes the important point that claim construction decisions can carry over between patents, at least when the intrinsic evidence pertinent to both patents is the same, and also that collateral estoppel can arise from PTAB decisions.