Markman hearing precedent

[beer_dude]

What is the name of your state?
Does anybody know what effect a Markman hearing in one litigation (in which the summary judgement for dismissal was upheld on appeal) has on a different litigation in a different jurisdiction for the same patent? The Federal Circuit reviewed the claim construction and agreed with the Dist. Court but also did not address whether the preamble should have been read as a claim limitation which the Dist. Court did. The term that the Fed. Circuit construed was in the preamble so one would think that they implicitly endorsed the preamble as a claim limitation.

I can't find any definitive caselaw on the subject. Any help would be appreciated!

 

[divgradcurl]

What is the name of your state?
Does anybody know what effect a Markman hearing in one litigation (in which the summary judgement for dismissal was upheld on appeal) has on a different litigation in a different jurisdiction for the same patent? The Federal Circuit reviewed the claim construction and agreed with the Dist. Court but also did not address whether the preamble should have been read as a claim limitation which the Dist. Court did. The term that the Fed. Circuit construed was in the preamble so one would think that they implicitly endorsed the preamble as a claim limitation.

I can't find any definitive caselaw on the subject. Any help would be appreciated!

Good question. I'm not sure that there is a definitive answer to this question. Chisum cites cases on both sides of the aisle on this one. If this were in the same jurisdiction, then perhaps stare decisis would be sufficient to enforce the same claim construction findings on a different defendant. But since this is in a different district, its not bound by the decisions in the other district, so potentially the court could review claim construction de novo.

Now, the patent owner will likely be bound by collateral estoppel from taking a position on claim construction that is incompatible with positions taken in the previous case (See, e.g., Graco Children's Prod. Inc. v. Regalo Int'l LLC, 77 F.Supp.2d 660 (E.D. Pa. 1999)), but I'm not aware of any law that requires that the second court follow the claim construction of another court. Issue preclusion generally may not be applied against new defendants.

The problem here is that the new defendants are entitled to their day in court, and it would be unfair for them to be bound by a claim constuction in a previous case -- maybe they could do a better job arguing their case than the previous defendants did. From the way you have written your post, I am assuming that you are the defendants, and you like the outcome of the previous claim construction, but the rule appears to be that the court will likely go through claim construction all over again. Again, you could raise collateral estoppel if the plaintiff tries to make arguments incompatible with arguments made in the previous case, so it's not as if the second claim construction gets tried in a vacuum.

The one last potential wildcard would be if the Federal Circuit's ruling on claim construction were precedential. If all the CAFC did was uphold summary judgement, and say that they didn't find error in the lower court's construction, that's probably not going to be precendential (and therefore binding) on other courts. If, however, they did review claim construction de novo, then that would likely be found to be precedential.

Your attorney will have better information, and will be able to advise you accordingly. I didn't do an in-depth analysis of the caselaw -- I just looked up Chisum and another secondary source -- but maybe your attorney will be able to find some caselaw supporting your desires, or maybe the Horowitz book on patent litigation might have some further insights.

 

[beer_dude]

follow-up

Thanks for the info divgradcurl! I wrote that post after staring at the computer monitor for too long yesterday.

I am potentially the plaintiffs although I was not involved in the first litigation. (I am actually a law student working at a firm for the summer.) I say potentially the plaintiffs because this is a contingency-fee case that I feel does not look very promising. There was a second litigation regarding this patent that was transferred to the same district that handled the first litigation and there is the very real and likely possibility that any future litigation would be transferred there as well. That is why I don't think it would be a good idea to take the case, especially when thinking of sanctions and attorney fees that could be awarded against the plaintiff for a frivolous lawsuit. Actually - would the plaintiff be on the hook for that or would his lawyers also be liable?

To clarify my post regarding the appeal, the Fed. Circuit only reviewed one term from the Dist. Court's claim construction. That term was in the claim preamble and was instrumental in the finding of non-infringement. The Fed. Circuit made no mention about the Dist. Court's reading the preamble into the claim body but since the only term they did review was in the preamble, it would seem that they implicitly agreed with the Dist. Court.

What part of Chisum did you find your information in? I have only become acquainted with Chisum this week (other than just hearing about it in class). A great resource but I feel like I'm reading a "Choose Your Own Adventure" book because I keep going off on tangents and lose focus on what I was originally trying to look for! That'll teach me to go to a law school that focus on public service.

 

[divgradcurl]

Actually - would the plaintiff be on the hook for that or would his lawyers also be liable?

Under Rule 11, potentially both of you.

To clarify my post regarding the appeal, the Fed. Circuit only reviewed one term from the Dist. Court's claim construction. That term was in the claim preamble and was instrumental in the finding of non-infringement. The Fed. Circuit made no mention about the Dist. Court's reading the preamble into the claim body but since the only term they did review was in the preamble, it would seem that they implicitly agreed with the Dist. Court.

There is a ton of caselaw that says the preamble may be limiting, so its not really unusual that the CAFC didn't discuss it -- it's the general rule.

What part of Chisum did you find your information in? I have only become acquainted with Chisum this week (other than just hearing about it in class). A great resource but I feel like I'm reading a "Choose Your Own Adventure" book because I keep going off on tangents and lose focus on what I was originally trying to look for! That'll teach me to go to a law school that focus on public service.

I believe it ws Chapter 8, but don't quote me. If you have access to Lexis, Chisum is searchable electronically through Lexis -- use "markman" and "collateral estoppel" as search terms, and you should find it.