Ex parte Ditzik

Informative decision only: persuasive authority, not binding precedent. When a prior district court judgment of invalidity for lack of written description is final and the applicant had a full and fair opportunity to litigate, the Board may sustain an examiner's rejection of reissue claims on issue preclusion if the issues are identical, actually litigated, and essential to the judgment. Differences in standards of proof, claim wording that does not materially alter the written description question, new evidence not shown to have been unavailable earlier, and the PTO's non-party status do not avoid preclusion. No prior Board precedent is named as addressed on this point; the Board relied on Federal Circuit and Supreme Court authority applying issue preclusion to Office proceedings. For an examiner, the decision confirms that a final district court invalidity judgment can support a rejection on issue preclusion alone, without the Board reaching the merits (the written description rejection was not reached). For an applicant or patent owner, it means that amending claims, submitting new declarations and exhibits, or pointing to the lower PTO standard of proof will not avoid preclusion unless the applicant explains how the changes materially alter the adjudicated issue or why the evidence could not have been presented earlier. The Board relied on In re Freeman, Innovad Inc. v. Microsoft Corp., Ohio Willow Wood Co. v. Alps S., LLC, B & B Hardware, Inc. v. Hargis Indus., Inc., and Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found. LEGAL TEST OR STANDARD: Issue preclusion is only appropriate if "(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) the party against whom estoppel is invoked had a full and fair opportunity to litigate the issue in the first action." Innovad Inc. v. Microsoft Corp., 260 F.3d 1326, 1334 (Fed. Cir. 2001). The Board also noted it retains some discretion rooted in fairness, with the full and fair opportunity requirement a significant safeguard (Blonder-Tongue). TRIGGERING FACTS: A reissue application sought to reissue the '380 patent, whose claims were held invalid for lack of written description by a jury in a first district court case. The Federal Circuit affirmed under Rule 36 and certiorari was denied; a second case applied preclusion to other claims. The new claims kept the terms found to lack support (email, selective communication, PDA functions). The applicant had inventor and expert testimony, six attorneys at trial, post-trial motions and appeals. The applicant could not show that new claim language materially changed the issue or that its new evidence could not have been used earlier. KEY QUOTE: "Given such precedent, we are not persuaded that a difference in standards automatically prevents issue preclusion." (slip op. at 8) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board followed In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994), B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015), and Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333 (Fed. Cir. 2013). It distinguished Novartis AG v. Noven Pharms. Inc., 853 F.3d 1289 (Fed. Cir. 2017), and In re Baxter Int'l, Inc., 678 F.3d 1357 (Fed. Cir. 2012), where the challenger had failed to meet the higher district court burden, and distinguished SkyHawke Techs., LLC v. Deca Int'l Corp., 828 F.3d 1373 (Fed. Cir. 2016), because claim construction was not the issue. PRACTICE TIP: If a prior final judgment adjudicated the same written description issue, do not rely on amended claim language, standard-of-proof differences, or a new declaration; the appeal brief must show specifically how the amendments materially alter the adjudicated issue, or why the new evidence could not have been presented in the first case, or the preclusion rejection will likely be sustained.