Hal Wegner on USPTO inefficiency: "A principal purpose of patent reexamination is to permit patent litigants to take their case to the PTO and have a prompt resolution, sparing the judicial system the work of a trial. Here, patent litigation commenced in 1999, followed by reexamination in 2000 with a settlement entered by the court in 2001 – yet the reexamination has gone on now for seven (7) years – average for a case of this type – long after the litigation dust had settled."

In Re Trans Texas Holdings (CAFC 2006-1599, -1600)

In the course of the reexamination proceeding, Trans Texas urged that the PTO was bound by a claim construction rendered in an earlier infringement proceeding to which the PTO was not a party[, namely, that found during litigation.]

The Board held that a different claim construction standard applies in PTO proceedings, giving claims “their broadest reasonable interpretation consistent with the specification.”

Traditionally, issue preclusion, also known as collateral estoppel, applied only where the same parties to an earlier proceeding were involved in later litigation involving the same issue. See Restatement (Second) of Judgments § 27 (1982); Id. § 29 Reporter’s Note. More modern decisions in some circumstances apply issue preclusion even where the parties to the subsequent suit are not the same. See Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326-33 (1979); Restatement (Second) Judgments § 29. The latter doctrine is known as non-mutual collateral estoppel, and it is this latter doctrine that Trans Texas relies on here.

Issue preclusion is not warranted in this case because the PTO was not a party to the earlier litigation. Our case law has identified four prerequisites to the application of issue preclusion: “(1) identity of the issues in a prior proceeding; (2) the issues were actually litigated; (3) the determination of the issues was necessary to the resulting judgment; and, (4) the party defending against preclusion had a full and fair opportunity to litigate the issues.” Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1365-66 (Fed. Cir. 2000) (emphasis added).

We have never applied issue preclusion against a non-party to the first action. In fact, the Supreme Court has specifically held that “litigants . . . who never appeared in a prior action[] may not be collaterally estopped without litigating the issue. . . . Due process prohibits estopping them despite one or more existing adjudications of the identical issue which stand squarely against their position.” Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329 (1971); see also Parklane Hosiery, 439 U.S. at 327 n.7 (“It is a violation of due process for a judgment to be binding on a litigant who was not a party or a privy and therefore has never had an opportunity to be heard.”); Restatement (Second) of Judgments § 29 Reporter’s Note (“The proposition that a non-party cannot be bound by a judgment, unless he is represented by a party or has interests that are derivative from a party, is a rule of Constitutional law.”).

Claims are given “their broadest reasonable interpretation, consistent with the specification, in reexamination proceedings.” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).