Federal Circuit Rules That PTAB Claim Construction In Inter Partes Interference Proceeding Is Not Binding On District Court In Later Litigation

Skyhawke Technologies, LLC v. Deca International Corp., Case No. 2016-1325 (Fed. Cir. July 15, 2016)

One recurring question arising from AIA trials and other post-grant proceedings before the PTAB is whether a claim construction ruling made during the administrative proceeding is binding on a district court in a subsequent infringement lawsuit or other litigation. In B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2105), the Supreme Court ruled that a factual finding by the Trademark Trial and Appeal Board could have preclusive effect if all the normal elements of issue preclusion are satisfied. During the PTAB's consideration of a petition for review under the AIA, the Board generally must construe the challenged claims. What effect should that claim construction have on later district court proceedings involving the same patent? In a recent decision, the Federal Circuit strongly suggested that a PTAB claim construction ruling would not have a preclusive