In mCom IP, LLC v. City National Bank of Florida (Fed. Cir. May 15, 2026), the Federal Circuit affirmed a district court decision dismissing mCom’s patent infringement complaint under Rule 12(b)(6) for failure to state a claim, on the basis that the asserted claims of mCom’s U.S. Patent No. 8,862,508 (relating to electronic banking systems) were not materially different from claims of the same patent that had previously been canceled by the PTAB in an IPR:

[T]he court separately reviewed each of the four asserted claims and held that they “do[ ] not add any non-obvious content” or “do[ ] not add patentable substance” to the claims held unpatentable (and slated for cancellation) in the IPR, and were therefore invalid.

Slip op. at 7 (quoting district court opinion). In affirming the dismissal with prejudice on the ground of invalidity, the Court explained that the district court held the asserted claims invalid “on the same obviousness grounds, under 35 U.S.C. § 103, as those on which the PTO’s Board relied to hold the other claims of the ’508 patent unpatentable.” Slip op. at 11. The Court did not identify a legal theory under which claims that have not been adjudicated by the PTAB can be determined to be invalid in the context of a motion to dismiss, but this seems to be a straightforward application of collateral estoppel. See, e.g., Kroy IP Holdings, LLC v. Groupon, Inc., 127 F.4th 1376, 1381 (Fed. Cir. 2025) (“Groupon is correct that, under Ohio Willow Wood, collateral estoppel may apply to patent claims that were not previously adjudicated if the differences between the unadjudicated claims and the adjudicated claims “do not materially alter the question of invalidity.”) (quoting Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1342 (Fed. Cir. 2013)), reh’g denied, 146 F.4th 1360).

The problem with the Court’s affirmance is that in Kroy IP Holdings the Court reversed the district court’s dismissal of a complaint under very similar circumstances, determining that collateral estoppel cannot be applied to invalidate claims that are immaterially different from claims canceled by the PTAB in an IPR:

We hold that a prior final written decision of the Board of unpatentability on separate patent claims reached under a preponderance of the evidence standard cannot collaterally estop a patentee from asserting other, unadjudicated patent claims in district court litigation.

Kroy IP Holdings, 127 F.4th at 1381; see also ParkerVision, Inc. v. Qualcomm Inc., 116 F.4th 1345, 1361–62 (Fed. Cir. 2024), and our post addressing that case. Accordingly, the Court’s decision in mCom IP, LLC does not follow the Court’s precedential decisions in Kroy IP Holdings and ParkerVision, as required absent an en banc decision overruling the prior precedent.

The Court should take up this issue en banc, to overrule Kroy IP Holdings and ParkerVision, and determine that collateral estoppel may be applied under these circumstances. See Kroy IP Holdings, LLC v. Groupon, Inc., 146 F.4th 1360, 1362-66 (Fed. Cir. 2025) (Dyk, J., dissenting from denial of petition for rehearing en banc).