{"id":1515,"date":"2017-04-17T12:42:48","date_gmt":"2017-04-17T16:42:48","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1515"},"modified":"2017-04-21T23:41:40","modified_gmt":"2017-04-22T03:41:40","slug":"issue-preclusion-patent-owner-does-not-get-a-do-over-to-assert-the-claims-against-similar-products","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1515","title":{"rendered":"Issue Preclusion: Patent Owner Does Not Get a Do Over to Assert the Claims Against Similar Products"},"content":{"rendered":"

In Phil-Insul Corp. v. Airlite Plastics Co., [2016-1982]<\/a> (April 17, 2017), the Federal Circuit affirmed summary judgment of non-infringement of\u00a0U.S.
\nPatent No. 5,428,933. \u00a0In prior litigation in which Phil-Insul asserted the patent against a different defendant, the district court construed the claims, granted summary judgment, and the Federal Circuit summarily affirmed. \u00a0In the present action, Airlite successfully argued to the district court that the accused products have the same design as the\u00a0products found noninfringing in the prior litigation. The\u00a0district court agreed, and granted Airlite\u2019s motion for\u00a0summary judgment of noninfringement.<\/p>\n

Airlite raised collarateral estoppe, and\u00a0Phil-Insul countered that\u00a0(1) it did not\u00a0have a full and fair opportunity to litigate the issues in the prior litigation\u00a0because it now alleges infringement of\u00a0Claim 2, rather than Claim 1; (2) the district court\u2019s claimconstruction in the prior litigation was incorrect; and (3) the\u00a0defense of collateral estoppel is not available in this case\u00a0because the claim construction was not essential to the\u00a0court\u2019s noninfringement rulings.<\/p>\n

In granting summary judgment, the district court\u00a0found that all of the elements for collateral\u00a0estoppel were satisfied for both the claim construction\u00a0and noninfringement issues presented. Specifically,
\nthe district court found that Phil-Insul had a \u201cfull and fair
\nopportunity to litigate\u201d the claim constructions, and that those constructions\u00a0resulted in a finding of noninfringement. The district court
\nfurther found that the infringement issues were\u00a0\u201cessentially indistinguishable\u201d from those in the prior litigation, and that the accused Airlite products have the same\u00a0design as the products in the prior litigation.<\/p>\n

Collateral estoppel \u201cprecludes a plaintiff from relitigating\u00a0identical issues by merely \u2018switching adversaries\u2019\u201d\u00a0and prevents a plaintiff from \u201casserting a claim that the\u00a0plaintiff had previously litigated and lost against another
\ndefendant.\u201d \u00a0The Federal Circuit said that regional circuit law applies to the application of collateral estoppel, but Federal Circuit law applies to aspects peculiar to patent law. \u00a0In particular in determining\u00a0whether a later\u00a0infringement claim is the same as an\u00a0earlier claim, the products must be “essentially the same,” in other words\u00a0the differences between them are merely colorable or\u00a0unrelated to the limitations in the claim of the patent.<\/p>\n

Phil-Insul argued that the district court erred when it (1) gave collateral estoppel effect to a Rule 36 judgment;\u00a0(2) relied on the oral argument transcript from the prior appeal; and (3) failed to construe claim 2. \u00a0 We
\naddress each argument in turn. \u00a0The Federal Circuit found that a Rule 36 affirmance is\u00a0a valid and final\u00a0judgment, and can support claim or issue preclusion. \u00a0As to the reliance on oral argument transcript, the Federal Circuit found that\u00a0district court did not err in relying on the transcript to confirm the scope of what was at issue in the prior litigation. \u00a0Finally, as to the need to construe claim 2, the Federal Circuit first noted that the parties selected the terms and the claims to be construed, so Phil-Insul complaint is without merit. \u00a0The Federal Circuit further noted that claim 2 contains the same terms \u201cadjacent\u201d\u00a0and \u201cdimension\u201d terms that the court construed in the prior litigation, and that these terms were dispositive, and noting that it is well-established that claim terms are to be construed consistently\u00a0throughout a patent, citing\u00a0Rexnord Corp. v. Laitram Corp.<\/em>,\u00a0274 F.3d 1336, 1342 (Fed. Cir. 2001).<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Phil-Insul Corp. v. Airlite Plastics Co., [2016-1982] (April 17, 2017), the Federal Circuit affirmed summary judgment of non-infringement of\u00a0U.S. Patent No. 5,428,933. \u00a0In prior litigation in which Phil-Insul asserted the patent against a different defendant, the district court construed … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[7,49],"tags":[],"class_list":["post-1515","post","type-post","status-publish","format-standard","hentry","category-claim-constructino","category-collateral-estoppel"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1515","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1515"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1515\/revisions"}],"predecessor-version":[{"id":1517,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1515\/revisions\/1517"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1515"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1515"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1515"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}