Wednesday, March 07, 2018

Judge Newman on stare decisis in Ottah v. Fiat

In Ottah v. Fiat, Judge Newman had an opportunity to discuss claim construction.

This court had previously reviewed claim construction
of the ’840 Patent, and ruled that several claim limitations
require that the claimed book holder has a “removable
mounting.” VeriFone, 524 F. App’x at 629 (construing
the “removably attached” term). The VeriFone court held
that mounts that cannot be removed without tools do not
literally infringe claim 1, stating that claim 1 “is clear on
its face” and that “nothing in the specification suggests
that the claim language should be interpreted in a way at
variance with its ordinary meaning.” Id.

The ruling on claim scope is a matter of “claim construction,”
which is ultimately a question of law. See
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
836–38, 841–42 (2015). The issue was finally decided and
is not subject to collateral review. See Markman v.
Westview Indus., Inc., 517 U.S. 370, 390–91 (1996) (recognizing
the need for “uniformity in the treatment of a given
patent” and noting that “treating interpretive issues as
purely legal will promote (though it will not guarantee)
intrajurisdictional certainty through the application of
stare decisis on those questions not yet subject to interjurisdictional
uniformity under the authority of the single
appeals court”); see also Restatement (First) of Judgments
§ 70, cmt. a (Am. Law Inst. 1942), (“Under the doctrine of
stare decisis, where a court has in one case decided a
question of law it will in subsequent cases in which the
same question of law arises ordinarily decide it in the
same way. The doctrine is not rigidly applied, and a court
will sometimes overrule its prior decisions. The doctrine
of stare decisis is applicable although the parties in the
later action are different from those in the prior actions.”);
Stare Decisis, Black’s Law Dictionary (10th ed. 2014).
No error has been shown in this claim construction,
and no reason for departing from the rules of collateral
estoppel or stare decisis as to this claim term. Miken
Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d
1331, 1338 n.1 (Fed. Cir. 2008) (“[F]or us not to adopt the
same claim construction in a case such as this, in which
the construction of the claim term in question was a
necessary predicate to the determination of a prior litigation
before this court and is evident from the face of the
intrinsic record without resort to expert testimony, would
run counter to the Supreme Court’s guidance on stare
decisis in Markman . . . .”); Key Pharm. v. Hercon Labs.
Corp., 161 F.3d 709, 716 (Fed. Cir. 1998) (“We do not take
our task lightly in this regard, as we recognize the national
stare decisis effect that this court’s decisions on
claim construction have.”); see also Brady Const. Innovations,
Inc. v. Perfect Wall, Inc., 290 F. A’ppx 358, 363 (Fed.
Cir. 2008) (“Under the principles of stare decisis and the
Supreme Court’s guidance in Markman, this court follows
the claim construction of prior panels absent exceptional
circumstances.”). Here, it was shown that the MSJ Defendants’
accused cameras utilize fixed mounts that
require tools for removal. As such, the accused devices
are outside the literal scope of claim 1.

One suspects a relation to Judge Newman's recent
See Knowles loses appeal at CAFC; Judge Newman in dissent: "never before has a final claim construction by this court been held not to be preclusive".


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