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Judge Abrams Analyzes Application of Collateral Estoppel Doctrine Even Though Parties Didn’t Dispute It

On January 13, 2020, District Judge Ronnie Abrams (S.D.N.Y.) granted Defendant Chegg Inc.'s ("Chegg") motion to dismiss Plaintiff NetSoc, LLC's ("NetSoc") complaint on the ground that NetSoc is collaterally estopped from pursuing its claims of infringement of U.S. Patent No. 9,978,107 after a decision by the Northern District of Texas finding the patent invalid under 35 U.S.C. § 101.

NetSoc did not dispute that its claims against Chegg are collaterally estopped. The Court explained that nevertheless it must review the matter and decide whether the collateral estoppel doctrine's four criteria are met. The Court found that the criteria are clearly satisfied: (1) both actions involve the same plaintiff alleging infringement of the same patent; (2) in both actions, Chegg challenged the validity of the patent claims under 35 U.S.C. § 101; (3) the Northern District of Texas clearly resolved the validity issue with the benefit of full briefing and a hearing with NetSoc represented by the same counsel as it is in this action; and (4) the Northern District of Texas' conclusion that the patent claims are invalid was the basis and a necessary part of the decision to dismiss NetSoc's claims with prejudice. Accordingly, Judge Abrams granted Chegg's motion to dismiss NetSoc's complaint.

Case: NetSoc, LLC v. Chegg, Inc., No. 18-cv-10262, Dkt. No. 111 (S.D.N.Y. Jan. 13, 2020).