Phil-Insul Corp., DBA IntegraSpec v. Airlite Plastics Co., Formtech, LLC


Docket No. 2015-2037

O’MALLEY, BRYSON, WALLACH
April 14, 2017

Brief Summary: DC decision of collateral estoppel (CE) affirmed. Rule 36 judgment can serve as a basis for CE decisions. The FC panel also declined IS’s “request to reconstrue” the disputed claim limitations here since the “arguments were either made or could have been made” during a previous litigation regarding “substantially the same” products, “and they cannot preclude the application of estoppel in this case.”

Summary: Airlite argued to the DC that IntegraSpec has previously asserted and lost (Reward Wall Sys., FC 2014) on the same infringement claims asserted here (twice reexamined US 5,428,933 directed to expanded polystyrene foam blocks used as molds to cast concrete walls (termed “ICFs”)), and the DC granted its motion for SJ of noninfringement. This opinion regards IntegraSpec’s (IS) appeal of that decision. In the two Reward Wall DC decisions, independent claims 1 and 19 were at issue and two claim terms relevant to this appeal (“adjacent” and “substantially the same dimension”) were construed and “the parties agreed that these limitations should be construed the same way in both claims.” Following these constructions (and one other not relevant here), the Reward Wall defendants were granted SJ that the accused products did not infringe, either literally or under the DOE. In the first decision, the DC found no literal infringement or under DOE because “there was a narrowing amendment that limited the scope of the patent such that an ICF with less than two rows of alternating projections and recesses on a given panel or sidewall cannot infringe.” The second decision also found no infringement literally or under DOE because “to gain issuance of the ‘933 Patent, [IntegraSpec] limited its claims to ICFs with projections and recesses having ‘the same measurable length, breadth, area, and volume.” IS appealed, “challenging only the court’s construction of the terms ‘adjacent’ and ‘dimension’.” The FC “summarily affirmed the [DC’s] judgment pursuant to” FCRP 36, taking “judicial notice of the results of the reexamination proceedings.” IS filed its complaint against Airlite “while the Reward Wall action was pending”, alleging infringement by Airlite’s Fox Block ICFs and the Fox Block 1440 ICFs. It was undisputed that the Fox Block ICF’s “have only one row of alternating projections and recesses on the top and bottom edges of each sidewall.” It was also undisputed that “the Fox Blocks 1440 ICFs include projections that do not have the same measureable length, breadth, area, and volume, and that the differences are greater than 10%.” The FC panel opinion explains that “[c]ollateral estoppel [CE] ‘precludes a plaintiff from relitigating identical issues by merely ‘switching adversaries’ and prevents a plaintiff from ‘asserting a claim that the plaintiff had previously litigated and lost against another defendant’” (Parklane Hosiery, US 1979). The FC decides such issues under the law of the regional circuit (here, the Eigth Circuit) although FC precedent applies…to aspects of the…analysis that are particular to patent law” (Aspex Eyewear, FC 2013; Roche, FC 2008 (“‘same claim’…if the accused products in the two suits are ‘essentially the same’…differences between them are merely colorable or unrelated to the limitations in the claim of the patent”)). IS first argued “that a Rule 36 judgment can never serve as a basis for” CE but the FC panel disagreed (Rates Tech., FC 2012 (“simply confirms that the trial court entered the correct judgment” and “does not endorse or reject any specific part of the court’s reasoning”; Anderson, US 1983). And, here, IS conceded “that the accused products…are substantially the same as those at issue in Reward Wall” and the FC panel found no error in the DC’s conclusions. The FC panel also declined IS’s “request to reconstrue” the disputed claim limitations here since the “arguments were either made or could have been made in Reward Wall, and they cannot preclude the application of estoppel in this case.”

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