Academic journal article Santa Clara High Technology Law Journal

RF Delaware, Inc. V. Pacific Keystone Technologies, Inc.: The Federal Circuit Has Finally Spoken on Collateral Estoppel of Claim Interpretation

Academic journal article Santa Clara High Technology Law Journal

RF Delaware, Inc. V. Pacific Keystone Technologies, Inc.: The Federal Circuit Has Finally Spoken on Collateral Estoppel of Claim Interpretation

Article excerpt

Since the Supreme Court's decision in Markman, (1) courts have struggled to determine whether one court's claim interpretation is binding on another court, and the decisions have not been uniform. Some courts have held that claim interpretation has a special finality and collateral estoppel always applies to an earlier claim interpretation, (2) and others have held it does not. (3) As scholars debated the issue, (4) the Federal Circuit appeared content to remain silent. In the case of RF Delaware, Inc. v. Pacific Keystone Technologies, Inc., however, the Federal Circuit finally considered the issue. (5)

In RF Delaware, the Federal Circuit held that collateral estoppel did not apply to the earlier claim constructions because the required standard for finality was not met. (6) The court held that the lower court's orders granting partial summary judgment and the following settlement were not sufficiently firm to have preclusive effect. (7) With its decision, the Federal Circuit clarified some of the questions that the lower court decisions were unable to answer, although the RF Delaware court never acknowledged either the growing circuit split or its clarification of that split.

Part I of the Article provides an overview of patent law, claim interpretation, collateral estoppel, and examines pre- and post-Markman decisions on collateral estoppel, focusing especially on the "essential to final judgment" element. Part II examines the Federal Circuit's decision in RF Delaware. Part III analyzes the Federal Circuit's decision and suggests how the decision affects the law of collateral estoppel of claim interpretation. This Article concludes that collateral estoppel can apply to a court's claim interpretation, but there is no special finality to a claim interpretation, and the form of the court's Markman hearing may affect whether collateral estoppel can apply to the claim interpretation.

I. COLLATERAL ESTOPPEL AND CLAIM INTERPRETATION

A. Overview of Patent Law

A patent is essentially an agreement between an inventor and the United States government. The government grants a patentee the right to exclude others from "making, using, offering for sale, or selling the invention throughout the United States" for a term of twenty years. (8) In return for this right, the patentee must fully disclose the invention to the public. (9) After the term of years of the patent runs out, the patent becomes a part of the public domain and anyone may use it. (10) The goal of the patent system is to encourage creativity and innovation by providing an incentive to invent, (11) and to allow other inventors to utilize the information within the public domain. (12)

An inventor may obtain a patent after successfully prosecuting a patent application before the United States Patent and Trademark Office. (13) For a patent to be granted, the invention must meet certain statutory requirements: it must be useful, (14) novel, (15) and nonobvious. (16) The invention must also fall within the realm of patentable subject matter. (17) Once a patent application is filed, the patentee may file further patent applications as continuations, continuations-in-part, or divisional applications and claim the priority date of the original application, as long as no new matter is introduced. (18)

If another party is allegedly using the invention without the patentee's consent, the patentee may sue that party for infringement of the patent. (19) The infringement analysis consists of two steps: (1) construing the patent claims, and (2) determining whether the alleged product infringes. (20) Only the specifically described claims of a patent may be infringed. (21)

Patent law is within the exclusive domain of the federal courts. (22) The United States Court of Appeals for the Federal Circuit ("Federal Circuit") has exclusive jurisdiction over patent case appeals from district courts, (23) subject to discretionary review by the Supreme Court. …

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