Appeal No. 2005-2643
Reexamination Control No. 90/005,842
F.3d 1048, 1054 [44 USPQ2d 1023, 1028] (Fed. Cir. 1997) (“It would be
inconsistent with the role assigned to the PTO in issuing a patent to
require it to interpret claims in the same manner as judges who,
post-issuance, operate under the assumption the patent is valid.”).
Instead, as we explained above, the PTO is obligated to give claims their
broadest reasonable interpretation during examination.
Appellant’s reliance (Brief at 9) on the claim interpretation given in the district court’s
Markman order is therefore misplaced.
Appellant nevertheless argues (Reply at 4-5) 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
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