USPTO Prohibited from Construing Claim Term Differently in IPRs for Related Patents

April 2018

 

Nestlé USA, Inc. v. Steuben Foods, Inc., No. 17-1193 (Fed. Cir. Mar. 13, 2018)

IIn Nestlé, the Federal Circuit held that the Patent Trial and Appeal Board was collaterally estopped from adopting a claim construction in an inter partes review that was inconsistent with the claim construction of a related patent in an appeal of a separate IPR.

Steuben Foods was the owner of a patent directed to systems for aseptic food packaging. Nestlé challenged Stuben’s patent in an IPR, and the Board issued a final written decision finding that at least one claim of the patent was not obvious. Nestlé appealed, arguing that the Board erred in applying a claim construction to the terms “aseptic” and “aseptically disinfecting” that was inconsistent with a construction of those terms in a separate IPR and subsequent appeal of a related patent.

Collateral estoppel protects a party from having to litigate issues that have been fully and fairly tried in a previous action and adversely resolved against a party-opponent.

The Federal Circuit vacated the PTAB’s inconsistent claim construction, holding that collateral estoppel applied. It was undisputed that both patents used the terms “aseptic” and “aseptically disinfecting” in the same way. Moreover, the two patents also provided similar descriptions of the term “aseptic” within their respective specifications. Since Steuben Foods had a full opportunity to litigate the claim construction in the prior appeal, the Federal Circuit concluded that collateral estoppel avoided the need to revisit an issue that was already resolved.

Takeaway: Collateral estoppel can apply in an administrative context. In particular, collateral estoppel can apply to claim construction in an inter partes review. Moreover, collateral estoppel is not limited to “patent claims that are identical,” and may apply when claim terms from a related patent are litigated.