Copyright (c) 2002 University of Minnesota Law School
Minnesota Intellectual Property Review
NOTE: The Application of Collateral Estoppel to Markman Rulings: The Search for Logical and Effective Preclusion of Patent Claim Constructions
3 Minn. Intell. Prop. Rev. 297
Timothy Le Duc*
In TM Patents, L.P. v. IBM Corp., 1 the Southern District Court of New York had the opportunity to promulgate the appropriate preclusion standard for patent claims interpreted in previous litigation. 2 Numerous district courts have found the creation of an effective and logical set of preclusion standards for prior Markman 3 rulings an extremely difficult task. The TM Patents decision, which held that collateral estoppel applied to prior patent claim construction, 4 was quickly criticized. For example, in Graco Children's Products v. Regalo Int'l LLC, 5 the Eastern District Court of Pennsylvania refused to follow the reasoning or holding of the TM Patents court. 6 The court in Graco held that to bind a party to a prior court ruling where that party did not have an opportunity or an incentive to appeal is unjust. 7 This view sharply contrasts with the rationale behind the TM Patents decision, which defers to judicial economy and the mitigation of unnecessary litigation. 8 The weighing of justice and judicial economy has rendered a divisive split between the lower courts concerning whether collateral estoppel should apply to Markman rulings. 9
This Note seeks to support the Eastern District Court of Pennsylvania's holding in Graco, 10 along with other recent rulings that support that court's reasoning and disagree with the TM Patents decision, and urges that the blanket application of collateral estoppel to patent claim construction of previous litigation is unjustified and illogical. Part I establishes the relevant background of issue preclusion ...
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