In the latest installment of their series on recent noteworthy Federal Circuit decisions, partners Sean Murray and Jeremiah Helm discuss a case “that will make life harder for defendants accused of infringing patents containing numerous claims.”
The article focuses on the Federal Circuit’s ruling in Kroy IP Holdings LLC v. Groupon Inc., in which the court considered a defendant’s successful use of collateral estoppel to challenge the validity of patent claims in district court, following the Patent Trial and Appeal Board (PTAB)’s earlier invalidation of other claims in the same patent. The Federal Circuit reversed the district court’s dismissal, ruling that collateral estoppel did not apply and that Kroy could pursue its district court litigation against Groupon in spite of the PTAB’s decision.
In their analysis, Murray and Helm note that Groupon was able to challenge and invalidate only a small portion of Kroy’s numerous claims during inter partes review. They discuss various strategies for challenging the validity of patents with numerous claims, such as filing parallel IPR petitions. “One thing is certain,” the authors conclude. “IPR petitioners will not be able to challenge a subset of a patent’s claims in the patent office and then rely on collateral estoppel to invalidate the rest.”
Read the full article here.
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