"Obviously, our client is pleased with the result," Anton Handal
Fed. Circ. Revives Flash Memory Patent Suit Against Huawei
By Ryan Davis
Law360, New York (November 19, 2014, 5:57 PM ET) -- The Federal Circuit on Wednesday partially resurrected a flash memory patent suit against Huawei Technologies Co. Ltd., GoPro Inc. and Pantech Wireless Inc., ruling that a judge had wrongly barred plaintiff e.Digital Corp. from seeking a claim construction on a patent that differed from the one in an earlier case.
The appeals court held that e.Digital was barred by the doctrine of collateral estoppel from seeking a new claim construction with regard to one of the two patents-in-suit since that patent was at issue in the earlier case. However, the second patent, which was not involved in the earlier case, presented a different issue, the court said.
The lower court found that the second patent was related to the first one and should be construed the same way, but the Federal Circuit said it actually disclosed a separate invention with different features.
"These distinctions reinforce the well-understood notion that claims of unrelated patents must be construed separately," the court wrote. "Because the asserted patents are not related, the ... patent requires a new claim construction inquiry."
"Obviously, our client is pleased with the result," Anton Handal of Handal & Associates, an attorney for e.Digital, said Wednesday.
E.Digital sued different defendants over U.S. Patent Number 5,491,774, which describes a recording device with a microphone and a flash memory system, in the District of Colorado in 2009. The judge in that case construed the patent to mean that the device can only use flash memory, not RAM or other memory systems.
Based on that construction, e.Digital got the Colorado case dismissed with prejudice. The '774 patent was later re-examined by the U.S. Patent and Trademark Office, and two key claims were canceled while a new claim was added.
In 2013, e.Digital filed the instant suit in the Central District of California against smartphone makers Huawei and Pantech and video camera maker GoPro. It alleged infringement of both the '774 patent and a second patent, U.S. Patent Number 5,839,108, which purports to improve on the '774 patent.
U.S. District Judge Dana M. Sabraw held that because the Colorado court had already construed the claims, the doctrine of collateral estoppel, which precludes a party from relitigating an issue, barred e.Digital from seeking a new claim construction on both patents.
The Federal Circuit said that Judge Sabraw was right with regard to the '774 patent since it "presents the identical claim construction inquiry" as the Colorado case, even with the new claim added in re-examination.
The '108 patent, however, is a different invention with a distinct prosecution history, so it is not related to the '774 patent, the court held. It noted that the '108 patent's written description clearly depicts RAM, so the Colorado judge's construction that the invention could not use RAM did not apply.
The court cautioned, however, that each case involving collateral estoppel requires a determination of whether previously decided issues are identical.
"To be clear, our decision that collateral estoppel cannot apply to the construction of a claim in one patent based on a previous claim construction of an unrelated patent is not an invitation to assume the opposite is always justified," it said. "That is, a court cannot impose collateral estoppel to bar a claim construction dispute solely because the patents are related."
Attorneys for the defendants could not immediately be reached for comment Wednesday.
The patents-in-suit are U.S. Patent Numbers 5,491,774 and 5,839,108.
Federal Circuit Judges Kimberly Moore, Kathleen O'Malley and Jimmie Reyna heard the appeal.
E.Digital is represented by Anton Handal and Pamela Chalk of Handal & Associates.
Huwaei is represented by Jose Patino, Nicola Pisano and Christopher Bolten of Foley & Lardner LLP.
Pantech is represented by Kevin O'Brien, D. James Pak, Matt Dushek and Yi Fang of Baker & McKenzie LLP.
GoPro is represented by Hector Ribera, Michael Sacksteder, Carolyn Chang and Bryan Kohm of Fenwick & West LLP.
The case is E.Digital Corp. v. Huawei Technologies (USA) et al., case number 14-1019, in the U.S. Court of Appeals for the Federal Circuit.
--Editing by Christine Chun.
Fed. Circ. Revives Flash Memory Patent Suit Against Huawei
By Ryan Davis
Law360, New York (November 19, 2014, 5:57 PM ET) -- The Federal Circuit on Wednesday partially resurrected a flash memory patent suit against Huawei Technologies Co. Ltd., GoPro Inc. and Pantech Wireless Inc., ruling that a judge had wrongly barred plaintiff e.Digital Corp. from seeking a claim construction on a patent that differed from the one in an earlier case.
The appeals court held that e.Digital was barred by the doctrine of collateral estoppel from seeking a new claim construction with regard to one of the two patents-in-suit since that patent was at issue in the earlier case. However, the second patent, which was not involved in the earlier case, presented a different issue, the court said.
The lower court found that the second patent was related to the first one and should be construed the same way, but the Federal Circuit said it actually disclosed a separate invention with different features.
"These distinctions reinforce the well-understood notion that claims of unrelated patents must be construed separately," the court wrote. "Because the asserted patents are not related, the ... patent requires a new claim construction inquiry."
"Obviously, our client is pleased with the result," Anton Handal of Handal & Associates, an attorney for e.Digital, said Wednesday.
E.Digital sued different defendants over U.S. Patent Number 5,491,774, which describes a recording device with a microphone and a flash memory system, in the District of Colorado in 2009. The judge in that case construed the patent to mean that the device can only use flash memory, not RAM or other memory systems.
Based on that construction, e.Digital got the Colorado case dismissed with prejudice. The '774 patent was later re-examined by the U.S. Patent and Trademark Office, and two key claims were canceled while a new claim was added.
In 2013, e.Digital filed the instant suit in the Central District of California against smartphone makers Huawei and Pantech and video camera maker GoPro. It alleged infringement of both the '774 patent and a second patent, U.S. Patent Number 5,839,108, which purports to improve on the '774 patent.
U.S. District Judge Dana M. Sabraw held that because the Colorado court had already construed the claims, the doctrine of collateral estoppel, which precludes a party from relitigating an issue, barred e.Digital from seeking a new claim construction on both patents.
The Federal Circuit said that Judge Sabraw was right with regard to the '774 patent since it "presents the identical claim construction inquiry" as the Colorado case, even with the new claim added in re-examination.
The '108 patent, however, is a different invention with a distinct prosecution history, so it is not related to the '774 patent, the court held. It noted that the '108 patent's written description clearly depicts RAM, so the Colorado judge's construction that the invention could not use RAM did not apply.
The court cautioned, however, that each case involving collateral estoppel requires a determination of whether previously decided issues are identical.
"To be clear, our decision that collateral estoppel cannot apply to the construction of a claim in one patent based on a previous claim construction of an unrelated patent is not an invitation to assume the opposite is always justified," it said. "That is, a court cannot impose collateral estoppel to bar a claim construction dispute solely because the patents are related."
Attorneys for the defendants could not immediately be reached for comment Wednesday.
The patents-in-suit are U.S. Patent Numbers 5,491,774 and 5,839,108.
Federal Circuit Judges Kimberly Moore, Kathleen O'Malley and Jimmie Reyna heard the appeal.
E.Digital is represented by Anton Handal and Pamela Chalk of Handal & Associates.
Huwaei is represented by Jose Patino, Nicola Pisano and Christopher Bolten of Foley & Lardner LLP.
Pantech is represented by Kevin O'Brien, D. James Pak, Matt Dushek and Yi Fang of Baker & McKenzie LLP.
GoPro is represented by Hector Ribera, Michael Sacksteder, Carolyn Chang and Bryan Kohm of Fenwick & West LLP.
The case is E.Digital Corp. v. Huawei Technologies (USA) et al., case number 14-1019, in the U.S. Court of Appeals for the Federal Circuit.
--Editing by Christine Chun.
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