Can collateral estoppel be applied against the USPTO in reexamination proceedings?
No, collateral estoppel (issue preclusion) generally cannot be applied against the USPTO in reexamination proceedings based on a district court holding in an infringement proceeding. This principle was established in the case of In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007).
According to MPEP § 2659:
“In In re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007), the court held that issue preclusion (collateral estoppel) could not be applied against the Office based on a district court holding in an infringement proceeding, because the Office was not a party to the earlier infringement proceeding and did not have ‘a full and fair opportunity’ to litigate the issue.”
This means that the USPTO is not bound by previous court decisions in infringement cases when conducting reexaminations, as it was not directly involved in those proceedings.
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