By Eric Schweibenz
On September 28, 2010, Chief ALJ Paul J. Luckern issued Order No. 16, an Initial Determination (ID) in Certain Electronic Devices With Multi-Touch Enabled Touchpads and Touchscreens (Inv. No. 337-TA-714).  In the ID, ALJ Luckern granted Respondent Apple Inc.’s motion for summary determination seeking to preclude Complainant Elan Microelectronics Corporation (“Elan”) from arguing a different claim construction position than the one found by a district court in a prior litigation.

On July 14, 2010, Apple moved for summary determination that Elan was collaterally estopped from challenging the construction of terms from asserted claims 1 and 18 of U.S. Patent No. 5,825,352 (the ‘352 patent) that were construed in Elan’s favor in a prior district court litigation.

Applying the four-part test used by the ITC to determine if collateral estoppel applies, ALJ Luckern first determined that the same claim construction issue was determined in the prior litigation.  According to the ID, Elan and the Commission Investigative Staff argued that the issues were not identical, because even though the same claim terms were at issue, (“identity a first maxima…,” “identify a minima…,” and “identify a second maxima…,” i.e., the max/min/max claim limitations), the current investigation concerned an additional issue not addressed in the prior litigation, namely whether these max/min/max limitations required a temporal sequence.  ALJ Luckern determined that whether specific arguments were made regarding a particular issue in a prior litigation is irrelevant to the issues of collateral estoppel, and it was undisputed that the district court in the prior litigation construed the max/min/max limitations, which was the issue in question, and the issues were therefore identical for purposes of collateral estoppel.

As to element two of the four-part test, ALJ Luckern determined that the claim construction of the max/min/max claim limitations was actually litigated in the prior litigation, because Elan’s predecessor in interest submitted competing claim constructions, fully briefed the issue, submitted expert witness testimony, participated in a Markman hearing, the district court issued a written opinion including construction of the claim limitations, and the court found in favor of Elan’s predecessor on summary judgment of infringement.

As to the third element, ALJ Luckern determined that resolution of the claim construction issue was essential to the final judgment in the prior litigation, because Elan’s predecessor argued for and received summary judgment and a preliminary injunction based on the claim construction and infringement arguments made before the district court.

With respect to the fourth and final element, Elan admitted that it had a full and fair opportunity to litigate the claim construction of the max/min/max claim limitations, and ALJ Luckern therefore found that all elements of collateral estoppel were met.

Finally, ALJ Luckern rejected Elan’s argument that the law is unsettled with respect to whether trial level Markman orders not affirmed by the Federal Circuit are subject to collateral estoppel.  ALJ Luckern determined that whether certain claim construction decisions are ruled final or not depends on the facts of individual cases, but no cases cited by Elan were analogous to the facts of Elan’s prior litigation, wherein a Markman opinion based on full briefing, expert testimony, and a hearing was followed by summary judgment and a preliminary injunction, and wherein the claim construction at issue was not appealed.