Whether a PTAB determination of unpatentability has collateral estoppel effect on patent validity in district court

QUESTION PRESENTED This Court repeatedly has held that, absent a directive to the contrary in a federal statute or rule of procedure, federal courts should not (1) create issueor claim-preclusion rules that are inconsistent with the Restatement (Second) of Judgments; or (2) create common-law procedural rules applicable in patent law cases that differ in application from federal cases generally. Nonetheless, the Federal Circuit did both in XY, LLC v. Trans Ova Genetics, L.C., 890 F.3d 1282 (Fed. Cir. 2018), by creating a widely applicable collateral estoppel rule in patent infringement cases flatly inconsistent with section 28(4) of the Restatement and in direct conflict with this Court’s decisions in Grogan v. Garner, 498 U.S. 279 (1991); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and B&B Hardware, Inc. v. Hargis Indus., 575 US. 138 (2015). The Federal Circuit applied XY, LLC in Petitioner’s patent infringement case as dispositive in denying Petitioner relief. The question presented is: Whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.