In re Trans Texas Holding Corp. (Fed. Cir. 2007)
Trans Texas holds two patents directed to a system of insulating both deposits and loans from inflationary and short-term interest rate fluctuations. In earlier litigation, a Texas district court construed various claim terms. Now, in reexamination, the PTO has taken a fresh look and offered its own interpretation of the claims.
Issue Preclusion (AKA Collateral Estoppel) traditionally blocks the same parties from relitigating the same issue in a later proceeding. CAFC caselaw has identified four elements of issue preclusion:
- Identity of the issues in a prior proceeding;
- The issues were actually litigated;
- Determination of the issues was necessary for the prior judgment; and
- The party defending against preclusion had a “full and fair opportunity to litigate the issues.”
Ex Parte Proceeding: Although reexamination is an ex parte proceeding, the CAFC considers the PTO to be a “party” as any other outcome “simply makes no sense.”
The PTO is plainly a party to these appeal proceedings, and if it were not treated as a party, there would be no basis for even considering the application of issue preclusion in the first place.
Since the PTO did not have an opportunity to litigate the issue in the Texas district court, it cannot be bound by that decision.
[T]he PTO was not even a party to the earlier district court litigation and cannot be bound by its outcome.