In e.Digital Corp. v. Futurewei Technologies, Inc. Case No. 14-1019, e.Digital Corp. had asserted two patents against Futurewei Technologies in a California district court. The patents at issue were the 5,491,774 (‘774) and 5,839,108 (‘108) patents. The patents pertained to recording devices having a microphone and a removable, interchangeable flash memory. The ‘108 patent was an improvement on the ‘774 patent, but only incorporated the ‘774 patent by reference and included a different written description and figures. A district court in Colorado had previously construed the claims of the ‘774 patent in a separate suit. The California district court held that e.Digital Corp. was estopped from pursuing a different claim construction from that of the Colorado court for both patents. However, on appeal, the Federal Circuit held that since the Colorado court had only construed the claims of the ‘774 patent and since the patents were not related, the ‘108 patent would require new claim construction. The district court had erred in applying collateral estoppel to the claim construction. However, the Federal Circuit further cautioned that the opposite is not always true. In other words, just because two patents are related does not mean that collateral estoppel is appropriate.
The test for applying collateral estoppel is if: 1) the issue necessarily decided in the previous proceeding is identical to the one which is sought to be relitigated; 2) the first proceeding ended with a final judgment on the merits; and 3) the party against which collateral estoppel is asserted was a party or in privity with a party at the first proceeding.
source: Maier & Maier, PLLC
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