Claim Construction Estoppel Heads to the CAFC
Shire LLC v. Sandoz, 07-CV-00197-PAB, December 5, 2008 (D. Co.)
The district court issued an Order and Memorandum construing the claims in the patents at issue. In the Order, the Court declined to apply the doctrine of issue preclusion to another district court’s claim construction with respect to the same patents.
Defendant moved the Court to certify the Order for immediate interlocutory appeal pursuant to 28 U.S.C. § 1292(b). Specifically, defendant requested that the Court certify two issues addressed in the Order, one of which was “whether collateral estoppel and/or stare decisis applies to a previous court’s unappealed claim construction."
After further review, the district court determined that appeal to the CAFC was warranted:
The Court further finds that there is substantial ground for difference of opinion as to the application of issue preclusion to another district court’s unappealed claim construction. There is no definitive guidance from the Supreme Court, the Tenth Circuit, or the Federal Circuit on this question. District courts have reached conflicting positions. Compare, e.g., TM Patents, L.P. v. Int’l Bus. Mach. Corp., 72 F. Supp. 2d 370, 377 (S.D.N.Y. 1999) (holding that claim construction in a Markman hearing is a final judgment for purposes of issue preclusion), with Kollmorgen Corp. v. Yaskawa Elec. Corp., 147 F. Supp. 2d 464, 469 (W.D. Va. 2001) (holding that issue preclusion applies only if the earlier claim construction “was essential to a final judgment on the question of the patents’ infringement”), and Graco Children’s Prods., Inc. v. Regalo Int’l, LLC, 77 F. Supp. 2d 660, 663 (E.D. Pa. 1999) (holding that, “despite a previous court having held a hearing on the claim construction of a patent pursuant to Markman,” issue preclusion would not apply under the facts of the case). Thus, the question presents a novel legal issue whose correct resolution is not substantially guided by prior precedent, as required by 28 U.S.C. § 1292(b).
Read/download the opinion here (link)
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Technically, the first issue going to the CAFC is whether to accept the interlocutory appeal. I predict the CAFC will decline.
Thankfully the CAFC has granted review of this matter. Hopefully the CAFC will provide clear guidance as this issue has clear ramifications to potential infringers attempting to design around or otherwise avoid infringement. If a patent owner is allowed to advance various different constructions based the current circumstances the notice function of patent claims could be seriously diminished.
Note, I am only in favor of defensive use of estoppel in this context. A defendant should be free to advance a more limiting theory of construction if it can be supported.
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