Case Information
*1 Before T ARANTO , L INN , and H UGHES , Circuit Judges. L INN , Circuit Judge.
U.S. Ethernet Innovations, LLC (“USEI”) appeals the decision of the United States District Court for the East- ern District of Texas, holding U.S. Patent No. 5,434,872 (“’872 patent”) invalid as anticipated on the basis of collateral estoppel, U.S. Ethernet Innovations, LLC. V. Texas Instruments, Inc. , No. 6:11-cv-491 (E.D. Tex. Feb. 19, 2015) (“ TI ”), following a final judgment of invalidity issued by the United States District Court for the North- ern District of California, U.S. Ethernet Innovations, LLC. v. Acer, Inc. , No. 4:10-cv-3724 (N.D. Cal. Oct. 10, 2014) (“ Acer ”), affirmed in Appeal No. 2015-1640, -1641 (Fed. Cir. April 25, 2016) (“ appeal”). USEI also contends that the district court erred by not allowing USEI to present its willful infringement argument. Because our contemporaneous affirmance of the Northern District’s summary judgment of invalidity of the ’872 patent in the companion Acer appeal has issue-preclusive effect, we are compelled to affirm and do not reach USEI’s argument on willfulness.
B ACKGROUND [1]
In 2009, USEI sued several computer makers and Ethernet end-users in the Eastern District of Texas for infringement of the ’872 patent, U.S. Patent No. 5,732,094, [2] and other patents no longer at issue. Those cases were transferred to the Northern District of Califor- nia, and are the subject of the companion Acer appeal. On September 15, 2011, USEI initiated the present action against Texas Instruments (“TI”) in the Eastern District of Texas for infringement of the ’872 patent and other patents no longer at issue. On April 3, 2014, the district court heard and denied a motion by TI for sum- mary judgment of invalidity of the ’872 patent as antici- pated by a SONIC reference. On April 11, 2014, a jury determined that all of the asserted claims of the ’872 patent were not invalid over SONIC. On June 20, 2014, a second jury determined that TI directly infringed and induced infringement of all asserted claims of the ’872 patent, and awarded USEI $3,000,000 in damages. On the basis of these jury determinations, the district court entered final judgment for USEI on September 19, 2014. In that judgment, the district court noted: “With the exception of the parties’ post-verdict briefing (Doc. Nos. 346, 348, 421, and 426 [including TI’s Rule 50(b) motion for judgment as a matter of law]), which will be ruled upon separately, all relief not previously granted is here- by DENIED .”
On November 7, 2014, Acer moved for summary judgment of invalidity in the Northern District of Califor- nia case on the same SONIC reference previously found not to anticipate the claims of the ‘872 patent in the Eastern District of Texas case. The Northern District of California granted the motion and found the asserted claims of both the ’872 and ’094 patents invalid as antici- pated. The court entered final judgment of invalidity on December 1, 2014.
Following the judgment of invalidity in the Northern District of California case, TI filed a motion in the East- ern District of Texas to compel the application of collat- eral estoppel and to enter judgment of invalidity of the ’872 patent, notwithstanding the earlier contrary judg- ment entered on the basis of the jury’s verdict. On Feb- ruary 19, 2015, the TI district court granted TI’s motion. The TI district court did not rule on TI’s Rule 50(b) mo- tion for judgment as a matter of law.
USEI challenges the Eastern District of Texas’s appli- cation of collateral estoppel in light of the timing of the district court ruling in the case and timely appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1).
D ISCUSSION
USEI argues that Fifth Circuit law not Federal Cir- cuit law governs the question of whether collateral estop- pel may be applied after verdict and judgment in the Eastern District of Texas case on the basis of the incon- sistent later judgment in the Northern District of Califor- nia case. See Cycles, Ltd. v. Navistar Fin. Corp. , 37 F.3d 1088, 1090 (5th Cir. 1994) (holding a district court judg- ments final and, thus, “strong enough to withstand pre- clusion by inconsistent later judgments” even when the precluded judgment was not yet appealable). We need not resolve this question, however, because we have contem- poraneously affirmed the invalidity of the ‘872 patent in the appeal, and that ruling itself has issue-preclusive effect. On issues of issue preclusion that implicate the scope of our own previous decisions, we apply Federal Circuit law. See Soverain Software LLC v. Victoria’s Secret Direct Brand Mgmt., LLC , 778 F.3d 1311, 1314 (Fed. Cir. 2015) (“We apply this court’s precedent to questions involving substantive issues of patent law, issues of issue preclusion that implicate substantive patent law issues, or issues of issue preclusion that impli- cate the scope of our own previous decisions.”).
Our decision in
Mendenhall v. Barber-Greene Co.
, 26
F.3d 1573, 1576-76 (Fed. Cir. 1994) (“ ”) in-
forms the outcome in this case. That decision flowed from
a series of cases in which patentee, Mendenhall, sued
Astec, Cedarapids, and Barber-Greene, respectively, for
infringement of the same patents in various district
courts. The Astec case was the first to proceed to trial
and resulted in a determination that the patents were not
invalid. On September 1, 1989, this court affirmed the no
invalidity ruling on interlocutory appeal and remanded
for a determination of damages.
See Mendenhall v. Astec
Indus., Inc.
,
The Cedarapids case was the next to proceed to trial, resulting in a final judgment of invalidity on March 4, 1991. This court affirmed the invalidity determination on September 13, 1993. See Mendenhall v. Cedarapids, Inc. , 5 F.3d 1557, 1574 (Fed. Cir. 1993), cert. denied 511 U.S. 1031 (April 18, 1994).
Following the invalidity ruling in the Cedarapids case, Astec, in the remand proceedings, argued that Mendenhall was collaterally estopped on the basis of Cedarapids . The Astec district court disagreed and pro- ceeded to award damages. Astec then appealed.
In the Barber-Greene case, the district court held that Barber-Greene had infringed, and Barber-Greene ap- pealed. The Cedarapids district court decision issued and we affirmed, while Barber-Greene’s appeal was pending. For the first time on appeal, Barber-Greene argued that the infringement determination and injunction should be reversed, based on the invalidity determination in Ce- darapids . , 26 F.3d at 1576. The Astec and Barber-Greene appeals were consolidated. Id . Menden- hall argued “that these cases [ Astec and Barber - Greene ] are too far along for [the accused infringers] to invoke collateral estoppel.” Id . at 1578.
We disagreed and held that “[i]t would be contrary to
the policies expressed in
Blonder-Tongue
were this court
now to enter the judgments Mendenhall seeks in these
appeals.”
Id
. In
Blonder-Tongue
, the Supreme Court held
that non-mutual issue preclusion was generally available
to accused infringers where a prior judgment had held
that the asserted patent was invalid.
Blonder-Tongue
Labs., Inc. v. Univ. of Ill. Foundation
,
cluding invalidity determination in
Cedarapids
, the
precluding
Acer
decision was made and affirmed by this
court. Just as Barber-Greene was not immunized from
the preclusive effect of
Cedarapids
while Barber-Greene
was on appeal after the district court’s final judgment, the
TI
decision here is likewise not immunized from the
preclusive effect of the appeal.
See also Soverain
,
USEI does not argue that it did not have a full and
fair opportunity to litigate the validity of the ’872 patent
in . Instead, USEI attempts to distinguish
Menden-
hall
by asserting that the precluding judgment in that
decision was a decision of this court, not a district court
decision. Now that we have upheld the invalidity of the
’872 patent, this argument is inapposite.
Cf. Hart Steel
Co. v. R.R. Supply Co
, 244 U.S. 294, 299 (1917) (“The
conclusion [of patent invalidity] which we have reached in
[the companion] Railroad Supply Co. v. Elyria Iron &
Steel Co. this day decided
“[A] patentee, having been afforded the opportunity to
exhaust his remedy of appeal from a holding of invalidity,
has had his ‘day in court’ and should not be allowed to
harass others on the basis of an invalid claim.”
Blonder-
Tongue
,
In short, this court’s affirmance in the appeal of the Northern District of California’s judgment that all of the asserted claims of the ’872 patent are invalid compels our affirmance of the Eastern District of Texas’s judgment under the circumstances of this case.
AFFIRMED
Notes
[1] Because we write for the parties, familiarity with the background of this case is assumed and presented herein only to the extent necessary to provide context for the analysis that follows.
[2] The ’094 patent is not at issue in this appeal, but was at issue in the appeal.