In this patent litigation between Adidas and Under Armour, Judge Sleet held a Markman hearing on May 14, 2015 and issued a claim construction order on June 15, 2015. The Defendant, Under Armour, subsequently filed a motion to modify the claim construction order based on the fact that the Under Armour had proposed the same construction in filing an inter partes review that it had proposed in the litigation. Although the PTAB did not institute IPR, Under Armour argued that Judge Sleet should adopt the construction advocated before the PTAB because the PTAB had accepted that construction in its denial of IPR. Therefore, Under Armour reasoned, the PTAB’s reliance on that construction means that collateral estoppel should apply. Adidas AG v. Under Armour, Inc., et al., C.A. No. 14-130-GMS, Or. at 2 n.1 (D. Del. Dec. 15, 2015).
Judge Sleet rejected this argument, reasoning that “the PTAB’s choice not to institute and IPR is not the type of adjudication that leads to issue preclusion” because the PTAB adopted Under Armour’s construction only “for purposes of this decision.” Id. Moreover, “the patent owner [Adidas] did not present the PTAB with a different construction than the one it presented to the court. The fact that it did not provide the PTAB with any construction does not weigh in favor of issue preclusion in such a preliminary proceeding. Contrary to the defendants’ assertions, the patentee is not ‘trying to have its cake and eat too.’ The court is not bound by a preliminary claim construction used by the PTAB for the limited purpose of denying an IPR request.” Id.