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Papst Licensing GmbH v. Samsung Electronics America, Inc.

Voluntary Dismissal of Appeals Leads to Issue Preclusion

Papst Licensing GmbH v. Samsung Electronics America, Inc., __ F.3d __, 2019 WL ___ (Fed. Cir. May 23, 2019) (DYK, Taranto, Chen) (PTAB) (3 of 5 stars)

Fed Cir affirms IPR cancellation of Papst’s claims for obviousness. Papst’s patent related to a high-data-rate interface device, positioned between a host computer and a data device, without the need for a user-installed driver. In a footnote, the opinion declines to Papst’s first claim construction argument as immaterial to the appeal. The Board had declined to address the argument in the Final Decision because the patentability issues did not turn on it; the appeal opinion does the same. Op. at 6 n.1. The opinion also declines to address Papst’s attack on the PTAB’s fact finding because the factual contention Papst was making on appeal had not been presented to the PTAB.

Papst was precluded from attacking other aspects of the PTAB’s reasoning by its voluntary dismissal of appeals from IPR decisions involving the same issues on related patents. Citing Martin, 448 F.3d 446 (D.C. Cir. 2007), the opinion reasons that voluntary dismissal of an appeal “creates preclusion based on the predicate opinion.” Op. at 9. And per MaxLinear, 880 F.3d 1373 (Fed. Cir. 2018), “issue preclusion doctrine can apply in this court to the PTAB’s decision in an IPR once it becomes final.” Op. at 11. Cygnus Telecommunications, 536 F.3d 1343 (Fed. Cir. 2008), is not contrary because this case did not involve consolidated matters, but “distinct ‘cases’ separately resolved.” Op. at 12. Nor had Papst invoked any of the circumstances identified in B & B Hardware, 135 S. Ct. 1293 (2015), that might justify an exception from issue preclusion. The opinion then analyzes one of the previous PTAB decisions (where Papst dismissed its own appeal) and reasons that it included the same relevant findings at issues here, “essential” to that case resolution. “Issue preclusion therefore applies to the only two issues properly preserved for and presented on appeal. The Board’s decision is affirmed on that basis.” Op. at 15.

The opinion then describes how, even apart from issue preclusion, Papst’s appeal fails on the merits, finding the Board’s claim construction appropriate and its factual determinations supported by the record.

KEYWORDS: ISSUE PRECLUSION; INTER PARTES REVIEW; OBVIOUSNESS; CLAIM CONSTRUCTION