CAFC in E.DIGITAL v. FUTUREWEI and HUAWEI DEVICE addresses collateral estoppel
From the decision:
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
That is, a court cannot impose collateral
estoppel to bar a claim construction dispute
solely because the patents are related.
Each case requires a determinaion that
each of the requirements for collateral estoppel
are met, including that the
issue previously decided is identical to the one sought to be litigated.
A continuation-in-part, for instance,
may disclose new matter that could
materially impact the interpretation of a claim, and
therefore require a new claim construction inquiry.
As to re-eamination:
Alhough we do not hold that
reexamination history cannot ever create a
new issue that would preclude the application of collateral estoppel, such
a scenario does not exist here because the
reexamination history in no way
modifies, clarifies, or even informs the
construction of the sole memory limitation.