XY v. Trans Ova Genetics

In XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018), a 2-1 panel of the Federal Circuit applied collateral estoppel based on an administrative PTAB proceeding having a lower burden of proof (preponderance of the evidence) for invalidating a patent, thereby precluding its litigation in federal court.

Judge Newman filed a vigorous dissent, in which she stated:

“

This holding of estoppel is based on a PTAB ruling in a separate case involving non-mutual parties, and contravenes not only the America Invents Act's estoppel provision, but also the general law of collateral estoppel. Of further concern, this holding that judicial authority is estopped by an administrative agency ruling between non-mutual parties warrants attention to the constitutional balance among the branches of government.

”

Id. at 1298.

Confusion caused

“

In XY, the Federal Circuit stated that its affirmance of a PTAB IPR decision invalidating a patent had "immediate issue-preclusive effect on any pending or co-pending actions involving the patent" in district court.24 The result of that case means that a patentee who gets his patent invalidated in an IPR that is later affirmed by the Federal Circuit cannot go around suing people on that patent in district courts. It's unclear to me that the Federal Circuit needed to invoke the doctrine of issue preclusion to reach that commonsense result since the [America Invents Act] already says that the [Patent and Trademark Office] Director must cancel any claim of a patent invalidated by an affirmed IPR.

”

United Therapeutics Corp. v. Liquidia Techs., No. 20-755-RGA-JLH, 2022 U.S. Dist. LEXIS 48461, at *12-13 (D. Del. Mar. 18, 2022)