In Blonder-Tongue Labs., Inc. v. Univ. of Ill., 402 U.S. 313 (1971), the Supreme Court precluded a patentee from re-asserting a patent that had been found invalid in a separate suit. Prior to that case, a patentee who lost on validity against one party was not generally precluded from asserting the same patent against another party. The doctrinal hook in Blonder-Tongue is known as non-mutual collateral estoppel and it allows a new-challenger to take advantage of the success of a prior-challenger. In a new decision, Judge Bryson has applied the doctrine mid-stream to quickly conclude a pending lawsuit by simply precluding the patentee from continuing to assert the patent after another court has ruled it invalid. DietGoal v. Chipotle, 12-cv-764 (E.D.Tex. 2014).
Risk of Multiple Jeopardy: The case here highlights the difficulty faced by patent assertion entities seeking to enforce their patents against multiple parties. Each accused infringer has the right to independently challenge a patent’s validity. But, if the patentee loses even one of those challenges, then the patentee will be estopped from further asserting the patent. Importantly, an invalidity finding in one case operates to shut down both pending and future assertions of the patent. Prior to the America Invents Act of 2011 (AIA), many patent enforcers had begun joining multiple defendants into single lawsuits and that setup-at least procedurally-helped patentees avoid the multiple-jeopardy risk. However, the AIA has forced a separation of these lawsuits in a way that again highlights the one-way risk. Under this new system, parallel infringement actions (same patent, different defendants) are now more likely to be heard in different venues and before different judges in a way that makes alternative outcomes more likely. And, the rise in post-issuance challenges further removes the risk-decision from the patent holder’s discretion.
Here: Federal Circuit Judge Bryson is sitting by designation in DietGoal v. Chipotle. The infringement litigation was filed in back in 2012 and involves U.S. Patent No. 6,585,516 that covers a computerized meal planning tool. Claim 2 of the patent is listed below:
2. A system of computerized meal planning, comprising:a User Interface;a Database of food objects; anda Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.
The same patent has been asserted in 60 other recent infringement lawsuits. Importantly, in one-such-case – DietGoal v. Bravo Media – the district court judge found all claims of the patent invalid as impermissibly claiming an abstract idea. In that decision, Judge Engelmayer (S.D.N.Y.) wrote:
[T]he claims of the ’516 Patent recite nothing more than the abstract concept of selecting meals for the day, according to one’s particular dietary goals and food preferences.
Following that decision in favor of Bravo, the defendants here (Chipotle) asked Judge Bryson to apply issue preclusion to end its case as well.
Collateral estoppel – also known as issue preclusion – applies to bar a party from re-litigating certain issues. There are typically four elements that must be met before estoppel will attach:
- The issue sought to be precluded from relitigation is identical to the issue decided in the earlier proceeding;
- The issue was actually litigated in the former proceeding;
- The determination on the issue in the prior action was necessary to the resulting judgment in that case; and
- The person against whom collateral estoppel is asserted had a full and fair opportunity to litigate the issue in the prior action.
Here, Judge Bryson found that all four of those elements had been met with regard to patent-ineligibility as decided in the prior Bravo case.
In Blonder-Tongue, the Supreme Court noted that estoppel might not apply in “those relatively rare instances where the courts wholly failed to grasp the technical subject matter and issues in suit.” DietGoal here argued, that this was one of those relatively rare instances — especially since the district court in Bravo failed to conduct a claim construction before making its determination. However, according to Judge Bryson, DietGoal failed to indicate how claim construction would have been important to the 101 analysis. Judge Bryson also cited the several Federal Circuit decisions that
On Appeal: The Bravo decision is on appeal. That said, an important element of collateral estoppel is that it applies after the original district court final judgment – even if an appeal is pending and even if the “later” case was well underway at the time of the prior decision. Now, assuming that DietGoal can keep this case alive (likely via appeal) until the Bravo appeal is decided, and assuming that DietGoal wins on appeal (which I suspect is unlikely), then Judge Bryson would be forced to reconsider the case on its merits.