Phil-Insul Corp. v. Airlite Plastics Co.
854 F.3d 1344
| Fed. Cir. | 2017Background
- IntegraSpec (Phil‑Insul) owns U.S. Pat. No. 5,428,933 directed to bidirectional/reversible insulating concrete forms (ICFs) with particular top/bottom edge projection/recess patterns; the patent underwent two ex parte reexaminations.
- IntegraSpec sued multiple makers of ICFs in Reward Wall litigation; the district court construed two claim terms — “adjacent” and “substantially the same dimension” — and entered summary judgments of noninfringement as to accused products. The Federal Circuit summarily affirmed under Rule 36.
- While Reward Wall was pending, IntegraSpec sued Airlite, accusing two Airlite product lines (Fox Block and Fox 1440) of infringing the same patent claims; facts showed the Fox Block has only one row of projections (like Nudura) and Fox 1440 has projection size differences exceeding the court’s 10% dimension threshold (like Reward Wall iForm).
- Airlite moved for summary judgment based on collateral estoppel, arguing (1) the claim constructions and noninfringement rulings in Reward Wall are final and binding, and (2) Airlite’s accused products are essentially the same as the previously adjudicated noninfringing products.
- The district court granted summary judgment for Airlite; on appeal the Federal Circuit affirmed, holding collateral estoppel applied and that Rule 36 affirmance can have preclusive effect when the precise issues were raised and necessarily decided on appeal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether collateral estoppel bars IntegraSpec’s infringement claims | IntegraSpec: did not have a full and fair opportunity re Claim 2; Reward Wall focused on Claim 1; Rule 36 affirmance cannot preclude | Airlite: Reward Wall construed same terms, IntegraSpec litigated those constructions and lost; accused products are essentially the same | Collateral estoppel applies; infringement claims barred because the same issues were actually litigated and decided |
| Whether a Rule 36 summary affirmance can have preclusive effect | IntegraSpec: Rule 36 affirmance cannot be given preclusive effect here | Airlite: Rule 36 affirmance is a valid, final judgment and can have preclusive effect as to issues necessarily decided | Rule 36 affirmances can have preclusive effect when the precise issue was raised and necessarily decided on appeal; TecSec distinguished where multiple independent grounds exist |
| Whether Airlite’s accused products are "essentially the same" as previously adjudicated products | IntegraSpec: product differences / Claim 2 not decided previously so estoppel improper | Airlite: Fox Block and Fox 1440 are materially the same as Nudura and iForm products that were found noninfringing | Court: accused Airlite products are essentially the same; IntegraSpec conceded no substantive difference and failed to rebut similarity |
| Whether Claim 2 required a new construction here | IntegraSpec: Claim 2 wasn’t directly construed in Reward Wall and may conflict with Claim 1 construction | Airlite: same disputed terms appear in Claim 2; claim terms are to be construed consistently; IntegraSpec conceded Claim 2 contains Claim 1 limitations | Court: declined to reconstrue Claim 2; bound by prior constructions and IntegraSpec’s concessions |
Key Cases Cited
- Parklane Hosiery Co. v. Shore, 439 U.S. 322 (recognizes offensive collateral estoppel principles)
- Grober v. Mako Prods., Inc., 686 F.3d 1335 (Fed. Cir.) (standard of review for summary judgment in patent cases)
- Wilson v. Spain, 209 F.3d 713 (8th Cir.) (Eighth Circuit reviews summary judgment de novo)
- Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372 (Fed. Cir.) (accused products are "essentially the same" standard for preclusion)
- Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir.) (two‑step infringement analysis: claim construction then comparison)
- U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554 (Fed. Cir.) (on Rule 36 summary affirmances)
- TecSec, Inc. v. IBM, 731 F.3d 1336 (Fed. Cir.) (Rule 36 affirmance does not preclude relitigation when multiple independent grounds could have supported the judgment)
- Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742 (Fed. Cir.) (Rule 36 confirms correctness of lower court judgment but does not adopt its reasoning)
- Taylor v. McKeithen, 407 U.S. 191 (summary affirmances are within appellate discretion)
- Anderson v. Celebrezze, 460 U.S. 780 (summary dispositions bind only as to issues necessarily decided)
- Mandel v. Bradley, 432 U.S. 173 (same principle regarding limits of summary affirmance binding effect)