In Evonik Degussa GmbH v. Materia Inc., C.A. No. 09-636-NLH/JS (D. Del. June 30, 2014), Judge Noel L. Hillman, sitting by designation, considered plaintiff’s motion for partial summary judgment, arguing that defendant was precluded from raising claims or defenses in this case that had been previously litigated and decided in an interference proceeding before the USPTO. Plaintiff argued that both claim and issue preclusion applied to issues of priority and validity.
Having first concluded that the PTO’s decision in an interference proceeding can be subject to claim or issue preclusion, id. at 14, the court denied the motion in most respects, largely because the claims at issue in the litigation recited broader subject matter than those at issue in the interference proceeding. See, e.g., id. at 20-24. The Court did grant the motion in part and precluded defendant from asserting invalidity under sections 102 and 103 based on issue preclusion. Plaintiff argued the defendant was precluded from raising these arguments “because it chose not to assert such claims earlier out of self-interest.” Id. at 30. Applying case law from Delaware and other districts holding that patent validity is a single issue for purposes of issue preclusion, see id. at 31-32, the Court explained that since defendant “raised a validity challenge in the Interference, and validity is a single issue [for purposes of issue preclusion], [defendant] cannot later assert additional validity challenges under alternative theories of validity.” Id. at 33.