Adidas AG ("Adidas"), filed a patent infringement action against Under Armour, Inc. ("Under Armour") and MapMyFitness, Inc. ("MapMyFitness") alleging that they infringed over a dozen patents. After Under Armour and MapMyFitness filed answers and counterclaims, the district court held a Markman Hearing and issued a claim construction order.

After the claim construction order, the defendants filed a motion to modify the district court's claim construction. The defendants requested that the district court modify its construction of the term "route path" based on actions taken by the Patent Trial and Appeal Board ("PTAB"). Prior to the claim construction order, Under Armour filed a Petition for inter partes review ("IPR") of one of the patents-in-suit. 

In its Petition, Under Armour construed "with respect to a route path" to mean "in relation to a predetermined path" and argued that based on that construction, the challenged claims were anticipated by the prior art. As explained by the district court, Under Armour's construction was consistent with the construction rejected by the court in its claim construction ruling.

In its response to the Petition, Adidas stated that it disagreed with Under Armour's construction of "with respect to a route path," but did not propose any construction of its own. Adidas then argued that even under Under Armour's construction, the patented claims were not anticipated.

The PTAB agreed with Adidas and denied the Petition. The defendants then argued that because the PTAB relied on a different claim construction than the court, collateral estoppel should apply. The district court disagreed: "The PTAB's choice not to institute an IPR is not the type of adjudication that leads to issue preclusion. In declining to institute the IPR, the PTAB did not reach a final decision on the construction of "with respect to a route path." Without analysis, the PTAB adopted Under Armour's construction "for purposes of this decision." (D.I. 190, Ex. 3 at 9.) The PTAB found that using Under Armour's own construction, it had not shown a reasonable likelihood of success in its invalidity contentions. (Id. at 9-14.) Furthermore, the patent owner did not present the PTAB with a different construction than the one it presented to the court. The fact that it did not provide the PTAB with any construction does not weigh in favor of issue preclusion in such a preliminary proceeding. Contrary to the defendants' assertions, the patentee is not "trying to have its cake and eat too." (D.I. 190 at 11). The court is not bound by a preliminary claim construction used by the PTAB for the limited purpose of denying an IPR request.

Accordingly, the district court denied the motion to modify the claim construction order.

Adidas AG v. Under Armour, Inc., Case No. 14-130-GMS (D. Del. Dec. 15, 2015)