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[bamtxlaw]

The following issue has proven itself to be quite difficult due to limited case law and/or statutes which specifically address it. Basically, the issue can be summarized as follows:

Can an alleged infringer present evidence of previously invalidated  claims of prior litigation (different case/ different infringer) against a patent owner who is now claiming patent infringerment against the infringer based on other claims of the same patent. (i.e. the patent owner is not trying to assert the previously invalidated claims).

The purpose would be to try and prevent the infringer from introducing evidence that may "dirty" the clean image the patent owner wants to portray.

Hopefully someone out there has faced this specific issue or in the alternative may be able to provide some insight. Anything offered will likely be helpful. Thanks!

[clarklawyer]

I think it depends on the reason for invalidating of the claims and
the applicability of those reasons to the current claims.

It would not be very far fetched that the previous ruling was
very probative of the current claims, but obviously nobody can
really tell without looking at the claims and the prior decision.

If the infringers only argument is that one set of claims is
invalid so likely the others are invalid, perhaps the argument would
not be allowed.  But I wouldn't be surprised if the infringer
could do better than that.

There may be any number of issues that were decided by the
previous court that you may be estopped from relitigating
with a new infringer.  If so, the defendant can certainly present those
decisions to the trier of fact.

[JimIvey]

If I'm not missing the point, I think you're looking for Blonder-Tongue, a Supreme Court case which establishes the collateral estoppel effect of claim invalidity determination in court.

In short, once a claim is determined invalid in court (and all appeals have been exhausted), that claim is forever lost against all potential infringers.  No one can infringe a claim that has been determined invalid in court.  Well, technically, you can infringe it but it's alway okay to infringe an invalid claim.  You won't be found liable.

The reverse is not true -- a claim that has not been found invalid (i.e., has successfully withstood a challenge to invalidity) can always be challenged on grounds of invalidity in subsequent cases by different litigants.  Remember, claims are never found valid; they are or are not found invalid.  In other words, claims are never found not invalid, they are only not found invalid.  

I hope that helps.  Sorry the semantics are so subtle and obcur, but that's the way it is.

Regards.

[clarklawyer]

The OP indicated that the new infringement action did not involve
the same claims.   I think there is still the possibility that
the patentee may be estopped from arguing some common issues
decided in the previous action, but I'm don't know if there
are patent specific court decisions that might limit the
garden variety application of estoppel.

[JimIvey]

I see.  Other claims in the same patent.  Skimmed past that the first time.

I don't see any reason it wouldn't be allowed to bring such evidence.  But then I'm not a litigator.

I'm not sure it would be helpful to bring such evidence.  If the claims now asserted had withstood a challenge to validity, that would seem to make the claims appear stronger -- not good for the accused.  On the other hand, if the claims now asserted were not asserted before and didn't face the challenge to validity, it might be helpful to show that similar, related claims were shown to be invalid for such and such reasons.

Bottom line:  I don't know.

[clarklawyer]

I'm not a litigator either, but as I recall there can often
be an assymetric component to estoppel.  The defendant can use past
litigation to prevent the plaintiff from rearguing issues lost
against another defendant, but the plaintiff cannot in turn assert
that issues in his favor have already been decided against
a previous defendant.

That said, I agree with you that litigation tested claims ought
to be stronger.  The OP did not make clear whether the claims he
now wishes to assert were held to be valid in an earlier action.

[Brad]

To help clarify, the claims which are now to be asserted were not even contested nor asserted in the prior litigation. The objective would be to prevent our current infringer from bringing in evidence the old claims which were asserted and held to be invalid. (Even though they don't contain the same issues as the claims which are "now" to be asserted).

I simply would like to see if I have any legal grounds for preventing the infringer from even bringing to light the prior invalid claims in order to make my patent seem less credible.

Hopes this helps! By the way thanks for the replies thus far!

[bamtxlaw]

Sorry if there was some confusion as to the prior post. But that was from bamtxlaw.

Thanks!

[bamtxlaw]

If I'm not missing the point, I think you're looking for Blonder-Tongue, a Supreme Court case which establishes the collateral estoppel effect of claim invalidity determination in court.

In short, once a claim is determined invalid in court (and all appeals have been exhausted), that claim is forever lost against all potential infringers.  No one can infringe a claim that has been determined invalid in court.  Well, technically, you can infringe it but it's alway okay to infringe an invalid claim.  You won't be found liable.

The reverse is not true -- a claim that has not been found invalid (i.e., has successfully withstood a challenge to invalidity) can always be challenged on grounds of invalidity in subsequent cases by different litigants.  Remember, claims are never found valid; they are or are not found invalid.  In other words, claims are never found not invalid, they are only not found invalid.  

I hope that helps.  Sorry the semantics are so subtle and obcur, but that's the way it is.

Regards.

I actually saw this same case too! However, instead of an infringer using this as a shield to prevent litigation of a previously invalidated claim, can the patent owner basically use the doctrine as a sword to estopp an infringer from bringing to the court's attention evidence of previously invalidated claims which are not relevent simply to ruin the patent's image.

[clarklawyer]

Theoretically the claims in a patent are drawn to embodiments
of a single invention or to a few related inventions.  It is
highly likely that a decision on a set of claims has settled
issues relevant to a related set of claims even if there is
not complete estoppel on the previously uncontested claims.

It is also possible that testimony under oath by a party in
litigaton can be introduced to show an inconsistent position in
a second litigation possibly in an attempt to challenge the parties
credibility.

Some theories for introducing the evidence may be improper but
I'm personally skeptical of your theory for excluding evidence,
particularly if the evidence is probative of issues concerning
currently contested claims.

If the evidence is truly not relevant, then the rules of evidence
would make it inadmissable.   But is it really irrelevant?

[JSonnabend]

Without addressing Blonder-Tongue, I think the real issue here is Fed. R. Evid. 403: is the probative value of the evidence at issue outweighed by its prejudicial value?  Fundamental evidentiary stuff.

As Isaac and Jim have alluded, because the claims are in the same patent and therefore ostensibly directed at the same invention, one would imagine a high probative value to the evidence.

- Jeff