- In re Riggs 22-1945.pdf

• Whether appellants could re-litigate that the PTAB acted ultra vires by granting an examiner request for rehearing after the Board’s earlier decision.: Issue preclusion bars reasserting an ultra vires/jurisdiction challenge where the same issue was actually litigated and necessarily decided in a prior appeal involving the same real party in interest, even if it arose within an APA-finality analysis.

- Inland Diamond 24-1106.pdf

• Whether PTAB unpatentability determinations and underlying fact findings have issue-preclusive effect in district court invalidity litigation given different burdens of proof.: Because IPR unpatentability is proven by a preponderance of the evidence while district-court invalidity must be proven by clear and convincing evidence, PTAB fact findings made under the lower standard do not collaterally estop a patentee (or otherwise establish facts) in district court invalidity proceedings.
• Whether issue preclusion may be applied to limitations of asserted dependent claims solely because parent claims were found unpatentable in an IPR.: A district court errs by using issue preclusion to relieve the accused infringer of proving, by clear and convincing evidence, the invalidity-related facts for limitations carried over from IPR-unpatentable parent claims; the challenger must still prove invalidity of the asserted claim as a whole under the district-court standard.
• Whether survival of asserted claims in an unappealed IPR (found “not unpatentable”) is a prerequisite for avoiding issue preclusion in district court.: The inapplicability of issue preclusion in this setting turns on the different standards of proof and the absence of a final appellate invalidation of the asserted claims, not on whether the asserted claims previously survived an IPR challenge.

- AMS-Osram 22-2185.pdf

• Ability to challenge exemplary damages after remand when the argument was available in the first appeal: An argument within the scope of the original judgment that could have been raised in the first appeal but was not is waived and cannot be revived on remand or in a subsequent appeal, including a statutory argument that exemplary damages are unavailable when the compensatory remedy is equitable disgorgement.

- Kroy IP 23-1359.pdf

• Whether PTAB unpatentability findings on different claims can collaterally estop assertion of other claims in district court.: A PTAB final written decision holding some claims unpatentable under the preponderance standard cannot collaterally estop a patentee from asserting different, unadjudicated claims in district court, because district-court invalidity requires clear and convincing evidence and issue preclusion generally does not apply across differing burdens of proof.
• Scope of XY, LLC v. Trans Ova Genetics regarding estoppel from IPR outcomes.: XY provides only that, once a PTAB unpatentability decision is affirmed and the same claim is effectively subject to inevitable cancellation, that same claim cannot be asserted again; XY does not authorize using PTAB factfindings under a lower burden to estop litigation of different claims that remain presumptively valid.
• Applicability of Ohio Willow Wood to PTAB-to-district-court estoppel for non-identical claims.: Ohio Willow Wood’s rule permitting estoppel for immaterially different claims addressed a district-court-to-district-court invalidity context and does not overcome the burden-of-proof barrier to applying estoppel from PTAB IPR decisions to unadjudicated claims in district court.

- Wash World 23-1841.pdf

• Effect of judicial estoppel on arguments about the basis of a general damages verdict.: A party that successfully maintained below that the jury adopted a particular expert damages calculation may be judicially estopped from arguing on appeal that the general verdict’s basis is indeterminate in order to avoid correction of an unsupported component of that calculation.