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Very interesting case law(similar to our case) How GBT, inc stopped Apple....
This is very interesting case law that GBT,inc able to stop collateral estoppel against Apple(disregard to final outcome). Finding that collateral estoppel does not apply where subsequent "reexamination history needs to be considered in connection with construing the claims.
Excerpts;
GBT, INC.,Plaintiff,
APPLE INC., et al.,Defendants.
APPLE INC., et al.,Defendants.
Texas court, and construction of the limitation was necessary to the invalidity decision.
GBT's only argument against collateral estoppel is that the issue is not identicalbecause "the '427 patent is a different patent, the reexamined '267 patent has different claims from those asserted in the Texas litigation, and the reexamined '267 patent hasadditional prosecution history that is necessarily relevant to claim construction." (D.I.
208/284 at 19; D.l. 212/288 at 1-3)
The court agrees with GBT that collateral estoppel is not applicable because the issue decided by the Texas court is not identical to that being litigated in the instant cases. The '427 patent and the reexamined '267 patent were issued on April 15, 2008 and December 25, 2009, respectively, after the conclusion of the Texas litigation (including the appeal). Neither prosecution history file was of record during that case.
That additional prosecution history, before the court in the instant cases, does not necessarily mean that the scope of any disputed limitations changed. However, the court cannot simply ignore new prosecution history that was not of record in the Texas litigation. See Power Integrations, Inc. v. Fairchild Semiconductor lnt'l, Inc., Civ. No. 08-309, 2009 WL 4928029, at *16-17 & n.1 (D. Del. Dec. 19, 2009) (citing Hawksbi/1
Sea Turtle v. FEMA, 126 F.3d 461, 477 (3d Cir. 1977)) (finding that collateral estoppel does not apply where subsequent "reexamination history needs to be considered in connection with construing the claims"). Therefore, collateral estoppel does not apply, and the court is not bound by the Texas court's construction of "access preamble" or he stipulated construction of "preamble" from the Texas litigation.
GBT's only argument against collateral estoppel is that the issue is not identicalbecause "the '427 patent is a different patent, the reexamined '267 patent has different claims from those asserted in the Texas litigation, and the reexamined '267 patent hasadditional prosecution history that is necessarily relevant to claim construction." (D.I.
208/284 at 19; D.l. 212/288 at 1-3)
The court agrees with GBT that collateral estoppel is not applicable because the issue decided by the Texas court is not identical to that being litigated in the instant cases. The '427 patent and the reexamined '267 patent were issued on April 15, 2008 and December 25, 2009, respectively, after the conclusion of the Texas litigation (including the appeal). Neither prosecution history file was of record during that case.
That additional prosecution history, before the court in the instant cases, does not necessarily mean that the scope of any disputed limitations changed. However, the court cannot simply ignore new prosecution history that was not of record in the Texas litigation. See Power Integrations, Inc. v. Fairchild Semiconductor lnt'l, Inc., Civ. No. 08-309, 2009 WL 4928029, at *16-17 & n.1 (D. Del. Dec. 19, 2009) (citing Hawksbi/1
Sea Turtle v. FEMA, 126 F.3d 461, 477 (3d Cir. 1977)) (finding that collateral estoppel does not apply where subsequent "reexamination history needs to be considered in connection with construing the claims"). Therefore, collateral estoppel does not apply, and the court is not bound by the Texas court's construction of "access preamble" or he stipulated construction of "preamble" from the Texas litigation.
The Patents-In-Suit and Disputed Limitations
The patents-in-suit are assigned to GBT and list the same two inventors -mmanuel Kanterakis and Kourosh Parsa. The '267 patent, titled "RACH Ramp-Up Acknowledgement," originally issued on June 3, 2003 with twenty-nine claims ("the original '267 patent"). Following ex parte reexamination, the United States Patent and
Trademark Office ("PTO") issued a reexamination certificate on December 15, 2009, confirming the patentability of claims 1-12 and 27-29; cancelling claims 13-26; and adding new claims 30-60. The '427 patent, also titled "RACH Ramp-Up Acknowledgement," is a continuation of the '267 patent and issued on April 15, 2008.
The patents-in-suit are assigned to GBT and list the same two inventors -mmanuel Kanterakis and Kourosh Parsa. The '267 patent, titled "RACH Ramp-Up Acknowledgement," originally issued on June 3, 2003 with twenty-nine claims ("the original '267 patent"). Following ex parte reexamination, the United States Patent and
Trademark Office ("PTO") issued a reexamination certificate on December 15, 2009, confirming the patentability of claims 1-12 and 27-29; cancelling claims 13-26; and adding new claims 30-60. The '427 patent, also titled "RACH Ramp-Up Acknowledgement," is a continuation of the '267 patent and issued on April 15, 2008.
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