Federal Circuit Vacates Summary Judgement on Collateral Estoppel Issue

The Federal Circuit has vacated a summary judgment ruling in a patent case involving Qualcomm, finding that the court erred in its application of collateral estoppel and abused its discretion in excluding expert testimony on patent validity.

The case is ParkerVision, Inc. v. Qualcomm Inc.

The case has been going for more than ten years. ParkerVision sued Qualcomm in federal district court in Florida, alleging infringement of its patented technology relating to “down-converting” electromagnetic signals (the “2011 Action”).

As the court explained,

‘[d]own-converting’ refers to converting a modulated high-frequency electromagnetic signal into a low-frequency or ‘baseband’ signal in an electronic device such as a wireless receiver.”.. . ParkerVision’s down-converting system uses a technique called “energy sampling,” which “differs from the technique of ‘voltage sampling,’ which was used in conventional down-converting systems.

More than nine years ago, the court affirmed a judgment as a matter of law (“JMOL”) of non-infringement in a patent infringement action brought by ParkerVision against Qualcomm relating to wireless communications technology.

ParkerVision filed a second infringement suit against Qualcomm on different but related patents. The latter case (the “2014 Action”) concluded with the district court granting Qualcomm’s motion for summary judgment of non-infringement based on collateral estoppel arising from the first case (“ParkerVision I”).

The district court also granted Qualcomm’s motions to exclude certain testimony ParkerVision had proposed to present through its patent validity and infringement experts.

As the Federal Circuit described,

[t]he district court granted Qualcomm’s Daubert motions, finding that ParkerVision II, affirming the PTAB’s invalidation of the challenged apparatus claims ’940 patent, collaterally estopped ParkerVision from relitigating characteristics of the prior art reference on which Qualcomm’s invalidity contentions rested. The district court also excluded certain infringement expert testimony, including testimony relating to infringement of the transmitter claims of the ’940 patent, based on its view that the experts’ opinions were unreliable.

Also,

[t]he [district] court concluded that Qualcomm’s accused products would not infringe the receiver claims of the ’907 and ’940 patents because “there is no material dispute over whether the claims at issue here are materially similar to those in ParkerVision I.

ParkerVision appealed.

The Federal Circuit noted that the parties’ dispute on collateral estoppel was based on whether ParkerVision’s receiver claims in the 2014 Action, covering the down-conversion of transmitted signals after they were received, were materially the same as the claims from the 2011 Action.

As the court explained, “determining whether collateral estoppel, also known as issue preclusion, applies presents a procedural question we evaluate according to regional circuit law.”

The court thus applied the law of the Eleventh Circuit, which applies collateral estoppel when these four elements are met:

1. the issue at stake must be identical to the one involved in the prior litigation;
2. the issue must have been actually litigated in the prior suit;
3. the determination of the issue in the prior litigation must have been a critical and necessary part of the judgment in that action and
4. the party against whom the earlier decision is asserted must have had a full and fair opportunity to litigate the issue in the earlier proceeding.

Here, the parties agreed that all but the first of the four requirements for collateral estoppel are satisfied:

They agree that (1) the issue of whether the accused Qualcomm products infringe the claims asserted in the 2011 Action was actually litigated, (2) the determination of that issue was a critical and necessary part of the judgment in that action, and (3) ParkerVision had a full and fair opportunity to litigate the infringement issue in that earlier proceeding.

Thus, said the court, “The sole dispute concerns whether the infringement issue in this case (the 2014 Action) is identical to the infringement issue litigated in the 2011 Action.”

The parties agreed that the accused products at issue in the current appeal operated, in all material respects, in the same manner as the products accused of infringement in the 2011 Action.

Therefore, said the court,

determining whether the infringement issue here is the same as the infringement issue in the 2011 Action requires only an assessment of whether the receiver claims of the ’907 and ’940 patents asserted in this case are materially the same as the claims that were the basis for the finding of non-infringement in the 2011 Action.

The Federal Circuit found that the district court

did not undertake claim construction, nor did it analyze the claim language or consult any other intrinsic evidence to determine the scope of the claims asserted in this action. Instead, the district court relied on Qualcomm’s expert reports, which it found to be “unrebutted,” … and from this extrinsic evidence concluded that “the [r]eceiver [c]laims at issue here have the same requirements as the claims in ParkerVision I, including the ‘generating limitation.’

This was found by the Federal Circuit to be an error.

First, the Federal Circuit said the district court erred by failing to assess claim scope by conducting claim construction.

Instead, said the Federal Circuit, the district court relied principally on extrinsic evidence, particularly Qualcomm’s expert opinion, when it should “look first to the intrinsic evidence of record, i.e., the patent itself, including the claims, the specification and, if in evidence, the prosecution history.”

According to the Federal Circuit,

[e]xtrinsic evidence, including expert and inventor testimony, dictionaries, and treatises, is “less significant than the intrinsic record in determining the legally operative meaning of claim language.”

Here, said the court,

Hence, the district court erred by ignoring the relevant intrinsic evidence and turning directly to the extrinsic evidence in determining that the receiver claims asserted in this case have materially the same scope as the claims that were at issue in ParkerVision I.

Also, the Federal Circuit said the district court erred by treating Qualcomm’s expert opinion as “unrebutted.”

Finally, the Federal Circuit found that the district court abused its discretion in granting Qualcomm’s motion alleging that ParkerVision’s expert’s opinions had an unreliable basis.

The case was remanded for further proceedings.