2259 Res Judicata and Collateral Estoppel in Reexamination Proceedings [R-10.2019]
MPEP § 2242 and § 2286 relate to the Office policy controlling the determination on a request for reexamination and the subsequent examination phase of the reexamination where there has been a federal court decision on the merits as to the patent for which reexamination is requested.
Claims finally held invalid by a federal court, after all appeals, will be withdrawn from consideration and not reexamined during a reexamination proceeding. A rejection on the grounds of res judicata will not be appropriate in reexamination. However, if the claims in a reexamination proceeding present the same issue(s) as claims that were finally held invalid by a federal court in a proceeding involving a different patent in the same patent family, collateral estoppel may apply if the patentee had a full and fair opportunity to litigate that issue in federal court. See In re Arunachalam, 709 Fed. Appx. 699 (Fed. Cir. 2017)(nonprecedential).
Claims finally held as "not invalid" by a federal court, after all appeals, may still be subject to reexamination. One of the essential elements of claim preclusion (res judicata) is the involvement of the same parties, or parties in privity with the original parties. The doctrine of res judicata based on a court holding in an infringement proceeding is not applicable in reexamination proceedings, because the Office was not a party to the litigation.
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; See also In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011), in which the majority did not adopt the dissent view that reexamination of claims finally held as "not invalid" by a federal court was barred by claim preclusion (res judicata) or issue preclusion (collateral estoppel).
