Simpleair, Inc. v. Google LLC (No. 2016-2738, 3/12/18) (Lourie, Reyna, Chen)

March 12, 2018 2:07 PM

Lourie, J. Reversing district court's dismissal of claims based on claim preclusion and the Kessler doctrine where plaintiff had asserted terminally disclaimed continuation patents against products previously found not to infringe parent patents. Although the new patents issued after the first action was commenced, they could be barred by claim preclusion, but the district court erred in presuming that the new patent claims were precluded based on a common specification and a terminal disclaimer. “Where different patents are asserted in a first and second suit, a judgment in the first suit will trigger claim preclusion only if the scope of the asserted patent claims in the two suites is essentially the same.” However, “[a] although a terminal disclaimer does not conclusively show that a child patent involves the same cause of action as its parent, the terminal disclaimer is still very relevant to that inquiry.” The same analysis applied to the district court's reliance on the Kessler doctrine.

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Ottah V. Fiat Chrysler (No. 2017-1842, 3/7/18) (Newman, Hughes, Stoll)

March 7, 2018 4:52 PM

Newman, J. Affirming summary judgment of non-infringement as to some defendants, and dismissal with prejudice as to others, based on claim construction in prior case which was either collateral estoppel or stare decisis. The doctrine of equivalents was barred by prosecution history estoppel.

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Knowles Electronics LLC v. Cirrus Logic, Inc. (No. 2016-2010, 3/1/17) (Wallach, Chen, Newman)

March 1, 2018 1:08 PM

Wallach, J. Affirming PTAB decision in inter partes reexamination that existing claims were anticipated and proposed claims were invalid under the written description requirement. With respect to written description, the specification described a genus of solder pads but failed to disclose the claimed species of solder pads connected by a particular process. Newman, J., dissented, believing that a prior construction of the claims by the Federal Circuit was inconsistent with the PTAB's construction. Although the PTAB had found it was not bound by the prior construction, the majority did not address the issue in ruling that the constructions were not inconsistent.

A full version of the text is available in PDF form.