adidas AG et al v. Under Armour Inc. et al, 1-14-cv-00130 (DED December 15, 2015, Order) (Sleet, J.)
Thursday, December 17, 2015
District Court Not Bound by PTAB’s Claim Construction in Rendering IPR Institution Decision
The court denied defendants' motion to modify the court's claim construction in light of the PTAB’s claim construction during inter partes review because issue preclusion did not apply. "In its response [to defendant's petition for inter partes review], [plaintiff] stated that it disagreed with [defendant's] construction of [a claim term], but did not propose any construction of its own. [Plaintiff] then argued that under [defendant's] construction, the patented claims were not anticipated. The PTAB agreed with [plaintiff] and denied the Petition. . . . The defendants argue that because the PTAB relied on a different claim construction than the court, collateral estoppel should apply. The PTAB's choice not to institute an IPR is not the type of adjudication that leads to issue preclusion. In declining to institute the IPR, the PTAB did not reach a final decision on the construction of [the term]. Without analysis, the PTAB adopted [defendant's] construction 'for purposes of this decision.'. . . 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."