Rule 36 summary affirmance of district court judgment can have preclusive effect

The alleged infringer in a patent infringement action moved for summary judgment, arguing that the patentee’s claims were barred by collateral estoppel based on a prior case against different alleged infringers but on the same patent and with similar products at issue. The district court agreed with the alleged infringer and granted summary judgment, and the patentee appealed.

The Federal Circuit affirmed the district court’s judgment. The court disagreed with the patentee’s argument that a Rule 36 judgment can never serve as a basis for collateral estoppel. The patentee argued that collateral estoppel did not apply because the earlier ruling on which estoppel supposedly rested was summarily affirmed, without opinion, by the Federal Circuit pursuant to Federal Circuit Rule 36, in contrast to the Federal Circuit decision in TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013), which held that a Rule 36 summary affirmance cannot have preclusive effect. In rejection of the patentee’s arguments, the court held that TecSec stands only for the proposition that collateral estoppel cannot apply where the appellate court summarily affirmed a district court judgment that “‘determined two issues, either of which could independently support the result,’ because it is not known which issue was ‘necessary’ to the final appellate judgment.” The court stated that TecSec is consistent with the established Federal Circuit principle that “for estoppel to apply, there must be no uncertainty as to whether the precise issue was raised and determined in the prior suit.” It found that there was no dispute as to the issue affirmed in the earlier ruling with respect to the case at bar, such that the findings of the earlier ruling could and did preclude the patentee from advancing its claims against the alleged infringer.