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Judge Burke applies issue preclusion based on arguments made to PTAB during inter partes review

Magistrate Judge Christopher J. Burke recently issued a Report and Recommendation on claim construction, construing terms and applying the doctrine of issue preclusion with regard to the proper function for one term in dispute.  Princeton Digital Image Corporation v. Konami Digital Entertainment, No. 12-1461-LPS-CJB (D. Del. June 16, 2017).  Defendants argued that issue preclusion applied because during prior inter partes review proceedings, plaintiff argued for a function for the term that it now opposes before this court.  Id. at 6-7.  Judge Burke agreed:

The Federal Circuit has recently explained that “administrative decisions by the [PTAB] can ground issue preclusion in district court when the ordinary elements of issue preclusion are met[.]” SkyHawke Techs., LLC v. Deca Int’l Corp., 828 F.3d 1373, 1376 (Fed. Cir. 2016). Issue preclusion (often referred to as the doctrine of “collateral estoppel”) applies when “(1) the identical issue was previously adjudicated; (2) the issue was actually litigated; (3) the previous determination was necessary to the decision; and (4) the party being precluded from relitigating the issue was fully represented in the prior action.” Fairchild Semiconductor Corp. v. Power Integrations, Inc., C.A. No. 12-540-LPS, 2015 WL 1905871, at *1 (D. Del. Apr. 23, 2015) (quoting Jean Alexander Cosmetics, Inc. v. L ‘Orea! USA, Inc., 458 F.3d 244, 249 (3d Cir. 2006)).

Id.at 8.  All prongs of the test were met because the PTAB previously adjudicated the issue of the proper function for the term in question, the PTAB adopted the function using the same standard for claim construction applicable in this case, and the Final Written Decision was a “final and valid judgment.”  Id. at 8-9.

Princeton Digital Image Corporation v. Konami Digital Entertainment Inc. No., 12-1461-LPS=CJB

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