Many people are familiar with the legal concept of double jeopardy (or perhaps at least the Ashley Judd movie that shares the same name). This is the idea built into our criminal legal system mandating that defendants cannot be tried twice for substantively the same crime. A similar concept exists in the civil court system of the US, and is typically called res judicata or claim preclusion. In this application, a litigant is not permitted to fully litigate a civil issue before multiple competent courts, thereby preventing the litigant from proverbially getting multiple bites at the apple.
This brings us to the patent context. The patent owner and potential patent infringer have multiple avenues to pursue a patent issue, such as typical federal district courts (e.g. the Middle District Court of Florida ) and the United States International Trade Commission . Over the last 2 decades, another avenue has developed in the administrative proceedings of the USPTO, particularly before the Patent Trial and Appeal Board.
Just like with other civil matters, patent litigants are prohibited from retrying issues before multiple courts. For example, if a patent is invalidated in one court, the patent owner can no longer assert the patent elsewhere. This brings us to the Novartis decision from the Court of Appeals for the Federal Circuit (CAFC). Patent holder Novartis had successfully defended and asserted its patents in federal court against Noven Pharmaceuticals, Inc. and won an appeal before the CAFC. The patent infringer, Noven, (they did lose twice) in this case, not happy with the federal courts, sought out additional relief from the USPTO in an inter partes review. Noven here won at the PTAB, a decision disagreeing with two federal court decisions. Novartis filed an appeal to the very same CAFC, where they argued substantively the same issues (both sides agreeing this was true).
Common sense might suggest the PTAB erred here, and that res judicata would compel the same decision. Unfortunately for Novartis, the CAFC pulled a “substantive” 180 and invalidated the patents at issue for nearly the same reasons it had rejected in a prior decision. The core of the CAFC’s reasoning related to the standard of evidence in the federal courts and before the PTAB. The patent infringer in this case had to prove invalidity in the federal courts with clear and convincing evidence (i.e. ~75%), but needed only a preponderance of evidence (i.e. ~51%) before the PTAB. In other words, it is technically easier for the patent defendant to win within the administrative courts of the USPTO.
Because of this, if you believe your small business is infringing an issued patent, it is critical that you seek counsel of a qualified patent attorney, who can advise you of potential avenues for defense. We have decades of experience with patent litigation and are available to discuss how we can help.