A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Invalidates Two Patents and Awards Summary Judge to Defendant

In an October 25, 2013 ruling, Judge John F. Keenan granted IBM's motion for summary judgment dismissing plaintiff Alexander Orenshteyn's long-running patent infringement action.  The plaintiff asserted two patents, the '569 patent and the '942 patent, against IBM in this action, which was then stayed pending the outcome of litigation on the same two patents against Citrix Systems, Inc. in the Southern District of Florida.  The Florida district court granted summary judgment of non-infringement, but the Federal Circuit overturned the decision for the '942 patent.  The parties lifted the stay in the action before Judge Keenan, and the Florida district court then almost immediately invalided the asserted claim, claim 1, of the '942 patent.  IBM then moved for summary judgment, arguing that the same reasoning used to invalidate claim 1 of the '942 patent applied equally to all the asserted claims in the '569 and '942 patent.

Judge Keenan first noted that under Federal Circuit law as applied in the district, "'collateral estoppel may apply to patent claims that were not previously adjudicated, because the "issues" litigated, not the specific claims around which the issues were framed" are determinative,'" and that "collateral estoppel 'forecloses patent claims that are "patentably indistinct" from rejected claims.'"  The plaintiff argued against the application of collateral estoppel by contending that his counsel's failure to fully oppose the summary judgment motion in the Florida district court amounted to a "default."  The Court rejected this argument, ruling that a "default" is narrowly defined under Fed. R. Civ. P. 55(a), and noting that in his appeal to the Federal Circuit of the Florida district court's decision, the plaintiff was represented by the same counsel as has appeared in this action.

IBM argued that collateral estoppel barred the plaintiff from contesting the validity of the '569 patent based on the invalidation of the '942 patent in part because the plaintiff filed a terminal disclaimer of the '569 patent, thus conceding that the two patents are patentably indistinct.  Judge Keenan, finding that "the law is clear that a terminal disclaimer cannot be treated as an admission," rejected that argument, but nevertheless applied collateral estoppel, writing that a "jury could not accept Plaintiff's position without necessarily rejecting the decision of the Florida court, which was affirmed by the Federal Circuit."

Judge Keenan also applied collateral estoppel to invalidate the remaining asserted claims in the '942 patent.  The Court found that those claims contained essentially all the limitations as the claim that had been invalidated by the Florida district court, as affirmed by the Federal Circuit, and that any additional limitations in those claims were known in the prior art.
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