FEDERAL CIRCUIT FINDS COLLATERAL ESTOPPEL APPLIES TO CLAIMS NOT AT ISSUE IN PRIOR PROCEEDING WHEN LITIGATED SUBJECT MATTER OF CLAIMS PREVIOUSLY ARGUED IS SIMILAR

PHIL-INSUL CORP. v. AIRLITE PLASTICS CO., Appeal No. 2016-1982 (Fed. Cir. April 17, 2017).  Before O’Malley, Bryson and Wallach.  Appealed from D. Neb. (Judge Bataillon).  (Collateral Estoppel)

In this case, Phil-Insul Corp (“IntegraSpec”) owns a patent directed to insulating concrete forms.  IntegraSpec asserted infringement in a first proceeding against a different defendant, and a claim construction hearing was held to construe two terms.  In the light of the construction of the two terms, the district court found the defendant did not infringe the asserted claims, which included claims 1 and 19 as independent claims.  Still, IntegraSpec appealed the district court’s decision, challenging only the claim construction.  The Federal Circuit summarily affirmed the district court’s judgment under FRCP Rule 36.

While the first proceeding was pending, IntegraSpec filed suit against Airlite.  IntegraSpec alleged that claim 2 was infringed.  After the disposition of the reexamination and first proceeding, Airlite moved for summary judgment of noninfringement based on collateral estoppel.  Then, Airlite argued that their products are not infringing for the same reasons that were litigated in the first proceeding.  Furthermore, IntegraSpec argued that in the first proceeding, (1) they did not have a full and fair opportunity to litigate the issues being raised, particularly because claim 2 was now being asserted and not claim 1.  Secondly, the district court’s claim construction was incorrect.  Thirdly, the claim construction was not essential to the noninfringement ruling.  Finally, the district court granted summary judgment of noninfringement to Airlite.

  • Did the district court err in granting summary judgment to Airlite based upon collateral estoppel?  (continue reading)

Summary by:  Joel Gotkin

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