In Re Koninklijke Philips Patent Litigation

Background

Defendants ASUS Computer International and ASUSTeK Computer Inc., collectively called ASUS, asked for permission to file an additional motion for summary judgment. ASUS argued that a Federal Circuit decision showed claim 12 of U.S. Patent No. 7,529,806 was invalid. In particular, ASUS contended that the Federal Circuit had adopted interpretations of the terms “media presentation,” “identifying,” “determining,” and “retrieving” that defeated the patentee’s validity arguments.

Court’s analysis

The court explained that claim construction—the legal process of determining what patent-claim terms mean—is a question of law. Federal Circuit claim constructions are generally binding under the principle of following previously decided legal issues, but that principle applies only to issues actually decided in the earlier case.

The court found that the Federal Circuit had not decided the disputed constructions. The appeal had not addressed the parties’ dispute over the phrase “a given segment of [a/the] media presentation,” and the court found no evidence that the Federal Circuit had addressed the constructions of “identifying,” “determining,” or “retrieving.” The court therefore was not bound by the underlying interpretations used by the Patent Trial and Appeal Board.

The court also concluded that issue preclusion, a doctrine that can prevent relitigating an issue already decided, did not resolve the dispute. Patent Trial and Appeal Board proceedings use a different claim-construction standard from district courts, and ASUS’s argument concerned how the constructions applied rather than the constructions themselves. The court further noted that ASUS could have brought the argument by the dispositive-motion deadline. If necessary, unresolved claim-construction issues could be addressed through supplemental proceedings before trial.

Ruling

Judge Haywood S. Gilliam, Jr. denied ASUS’s motion for leave to bring a second motion for summary judgment. The order did not decide the validity of claim 12 or grant or deny a summary-judgment motion on that issue.