Appeal No. 2005-2642
Reexamination Control No. 90/005,841
Appellant’s reliance (Brief at 7) on the claim interpretation given in the district court’s
Markman order is therefore misplaced.
Appellant nevertheless argues (Reply at 4) that we are bound by the district
court’s Markman order under the doctrine of issue preclusion discussed in In re
Freeman, 30 F.3d 1459, 1465-69, 31 USPQ2d 1444, 1448-51 (Fed. Cir. 1994). This
argument fails because the Markman order was not “necessary to the judgment
rendered in the previous action,” which is one of the four conditions for application of the
doctrine:
Issue preclusion is appropriate only if: (1) the issue is identical to one
decided in the first action; (2) the issue was actually litigated in the first
action; (3) resolution of the issue was essential to a final
judgment in the first action; and (4) plaintiff had a full and fair opportunity
to litigate the issue in the first action. A.B. Dick Co. v. Burroughs Corp.,
713 F.2d 700, 702, 218 USPQ 965, 967 (Fed. Cir. 1983), cert. denied,
464 U.S. 1042 (1984).
Freeman, 30 F.3d at 1465, 31 USPQ2d at 1448. Regarding claim interpretation, the
Freeman court further explains:
In the context of claim interpretation, this court has held that
judicial statements regarding the scope of patent claims are entitled
to collateral estoppel effect in a subsequent infringement suit only
to the extent that determination of scope was essential to a final
judgment on the question of validity or infringement.
A.B. Dick Co., 713 F.2d at 704, 218 USPQ at 968. This court has warned,
however, that statements regarding the scope of patent claims made in a
former adjudication should be narrowly construed. Id. Additionally, to
apply issue preclusion to a claim interpretation issue decided in a prior
infringement adjudication, "the interpretation of the claim had to be the
reason for the loss [in the prior case] on the issue of infringement."
Jackson Jordan, Inc. v. Plasser American Corp., 747 F.2d 1567, 1577,
224 USPQ 1, 8 (Fed. Cir. 1984).
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