The Federal Circuit recently vacated a summary judgment ruling of invalidity, holding that the district court erred in applying preclusive effect to the Patent Trial and Appeal Board’s unpatentability findings regarding other claims in the same patent. In doing so, the Federal Circuit reiterated that issue preclusion does not apply where the prior factual determinations were made under a lower standard of proof.

The claims asserted by the patent owner in the district court consisted […]

The longer you hold a fact, defense or claim in secret, the greater the chance you will never get to use it. In this case, a “perfunctory” pleading with no invalidity contention bolstering led to the loss of an obviousness-type double patenting invalidity defense. Takeaway: make sure all defenses are adequately and timely disclosed.

Bosch’s answer states that “[e]ach of the claims of the Patents-in-Suit is invalid and/or unenforceable for failure to satisfy the conditions […]