Patent Owner Collaterally Estoppel from Arguing Claim Construction Differing from Another Court's Previous Construction of the Same Limitation of the Same Patent


E.Digital Corporation v. Futurewei Technologies Inc., et al., __ F.3d __ (Fed. Cir. November 19, 2014) (MOORE, O'Malley, Reyna) (S.D. CA: Sabraw) (3 of 5 stars)
Collateral Estoppel: Federal Circuit affirms district court's decision holding patent owner was collaterally estopped from arguing a claim construction differing from another district court's previous construction of the same limitation of the same patent. The Fed Cir reasoned that, although the patent had subsequently gone through ex parte reexamination, the reexamination focused exclusively on another limitation unrelated to the claim term at issue. However, the Fed Circuit reversed the district court's decision applying the same collateral estoppel with respect to the same claim term in an unrelated patent. In so reasoning, the Federal Circuit reinforced the well-understood principle that claims of unrelated patents must be construed separately.
Fed. R. Civ. P. 54(b): Federal Circuit affirmed the district court's decision to convert a partial judgment of noninfringement to a final judgment under Fed. R. Civ. P. 54(b). The Federal Circuit reasoned that there was no just reason for delay because, as one case was already on appeal, certifying other cases against other defendants ensured that the collateral estoppel order would be appealed only once.

Authors: Brian J. Livedalen, Michael C. Tyler