The U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a prior district court dismissal, affirming that patent owners can pursue different claims even after some claims face invalidation in inter partes review (IPR). The case involved Kroy IP Holdings suing Groupon for patent infringement. Despite Groupon's successful challenges at the PTAB, the CAFC ruled that collateral estoppel should not prevent Kroy from asserting claims that were not part of the IPR challenge. This decision safeguards patent rights by ensuring that proof of invalidity meets a high evidentiary standard before determining preclusion effects.
Collateral estoppel should not apply. To hold otherwise would deprive patent owners of their property right without first requiring proof of patent invalidity that satisfies the statutorily-prescribed clear and convincing evidence standard.
Kroy then amended its complaint to include additional claims, many of which were not included in Groupon's IPR petitions.
The CAFC opinion held that patentees are not collaterally estopped from asserting different claims of a patent that had other claims invalidated in inter partes review.
Groupon got all of the challenged claims invalidated at the PTAB and the Federal Circuit affirmed via Rule 36.
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