Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Kroy IP Holdings, LLC v. Groupon Inc., Appeal No. 2023-1359 (Fed. Cir. Feb. 10, 2025)‎

After an inter partes review finds certain claims of a patent unpatentable, may the patentee assert other claims, immaterially different, in district court without being collaterally estopped? This was the question presented in our Case of the Week, and the Federal Circuit answered yes.

In 2017, Kroy sued Groupon for infringement of 13 claims of Kroy’s US Patent No. 6,061,660. Groupon subsequently filed two IPRs that challenged 21 claims, but not all of them, in the ’660 patent. At the conclusion of the IPRs, the PTAB determined all 21 claims Groupon had challenged were unpatentable. Then Kroy filed an amended complaint to assert other ’660 patent claims—ones which had not been included in the IPRs—against Groupon. Groupon motioned to dismiss the newly asserted claims under the doctrine of collateral estoppel. The district court granted Groupon’s motion to dismiss and Kroy appealed. The Federal Circuit reversed and remanded.

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ALSO THIS WEEK

U.S. Synthetic Corp. v. ITC, Appeal No. 23-1217 (Fed. Cir. Feb. 13, 2025)

In an appeal from a decision of the United States International Trade Commission (ITC), the Federal Circuit reversed a determination that a patent-in-suit was ineligible for patenting. The patent concerned polycrystalline diamond compacts, or products made from a synthetic diamond table bonded to a hard metal substrate, such as may be used in drill bits. The patent claimed such a product. The administrative law judge (ALJ) at the ITC found the claims ineligible for patenting because their subject matter was abstract—a decision that was affirmed by a divided panel of Commission judges. In a 23-page decision, a unanimous Federal Circuit panel reversed, and held that the claimed composition of matter was not abstract. The panel also affirmed the ALJ’s and the Commission’s findings that challengers had not proved the claims were invalid for lack of enablement.

The opinion can be found here.

Editors:

Nika Aldrich, IP Litigation Group Leader, Schwabe

Jason A. Wrubleski, Shareholder

Contributors:

Ann Bernert, Associate