No Collateral Estoppel Based on a Prior General Jury Verdict that Rested on Multiple Grounds

United Access Technologies, LLC v. CenturyTel Broadband Services LLC, __ F.3d __ (Fed. Cir. Feb. 12, 2015) (Newman, BRYSON, O'Malley) (D. Del.: Stark) (3 of 5 stars)

Federal Circuit reverses district court's decision that collateral estoppel barred this suit based a previous judgment of noninfringement of the same asserted claims. In a prior suit, a jury returned a general noninfringement verdict against one defendant, which the district upheld on JMOL because there was substantial evidence that (1) the patent did not cover the defendant's use of a networking standard and (2) the defendant's system did not include a telephone, as the claims required. The patentee then filed a second suit against different defendants that used the same networking standard.

Collateral estoppel did not bar the second suit. It was unclear which of the two independent grounds the jury's decision in the prior suit was based upon—the decision could have been based strictly on the noninfringement argument unique to the prior defendant's system, not whether the patent covered the networking standard. Because neither ground supporting the jury's verdict was necessary to the verdict in the first suit, neither ground had preclusive effect. It did not matter that the prior JMOL ruling held that both grounds were supported by substantial evidence, because that ruling was simply a decision that either ground could have supported the verdict—not a decision that each ground constituted an independent basis for the verdict. This is different than a case in which it was clear that the prior tribunal had explicitly adopted and relied upon both independent grounds and the second court could apply estoppel confident that the same issue had been actually decided previously.

Authors: Brian J. Livedalen, Michael C. Tyler