Federal Circuit: We don’t Decide Claim Construction in the Abstract

Personalized User Model, LLP v. Google Inc. (Fed. Cir. 2015) (Part II).

In Part I, I discussed the aspect of this decision dealing with the statute-of-limitations for dealing with an inventor who had (allegedly) breached his employment agreement by failing to assign patent rights. In Part II here I focus on the second important portion of the decision – a holding that the appellate court has no jurisdiction to address a claim construction appeal unless the result would impact the outcome of the case at hand.

At the district court, Google won the case based upon a finding of invalidity and non-infringement. The patentee (PUP) did not appeal those holdings, but did ask the court to review the lower court’s claim construction – arguing that the district court misconstrued the term “document” and that mis-construction may well impact future litigation of other claims in the patent family in the form of collateral estoppel (issue preclusion)

On appeal, the Federal Circuit refused to consider the claim construction appeal – finding that the appellate panel would be in violation of the US Constitution if it heard the case. In particular, the Federal Circuit panel held that the dispute over claim construction offered no case or controversy as required by Article III of the US Constitution.

Despite PUM’s concerns that the construction might be given preclusive effect in future litigation involving its related patents, we may not provide an advisory opinion on the meaning of a claim term that does not affect the merits of this appeal and thus is not properly before us.

Although it lost the appeal, asking the question may be good strategy on the part of the patentee here since the appellate court’s refusal to hear the appeal is potentially sufficient to negate the presumption that the patentee had a full and fair opportunity to litigate the issue. Thus, the result may be no issue preclusion.

– Dennis

22 thoughts on “Federal Circuit: We don’t Decide Claim Construction in the Abstract

  1. 8

    great post!

    immigration, accident, divorce, hurt in las vegas, litigating malpractice, injured in vegas, hurt by a doctor, las vegas personal injury attorney, negotiating clark county Nevada cases, traumatic injuries, hotel accident, decades of experience, casino negligence, nevada dui, medical malpractice, devastating accident, client rights, protecting victims

  2. 7

    Because PUM’s related patents were not actually litigated in the Google case, the district court’s construction of the term “document” might not preclude a narrower construction. If the specifications, prosecution histories or other evidence relating to PUM’s other patents present non-identical issues that would be critical to construction of the term “document,” as used in those patents, then collateral estoppel may not be applicable.

    Without such differences from the patent actually litigated in the Google case, collateral estoppel may preclude PUM from seeking a narrower claim construction because it had a full and fair opportunity to litigate the issue in the district court, and elected not to appeal any invalidity or noninfringement issues. If it had appealed invalidity of even one claim, based on the district court’s construction of “document,” the CAFC would not have dismissed the appeal for lack of Article III jurisdiction.

    1. 7.1

      Steve, I agree with your analysis here. But if I understand the facts correctly, at some time after the court judgment the claims being litigated were canceled from the patent pursuant to an inter partes re-examination. How could PUP appeal the judgment of invalidity under the circumstances?

      From the case:

      “Google responds that there is no longer a live infringement
      controversy between the parties because … the U.S. Patent and Trademark Office cancelled all asserted claims in inter partes reexamination.” Slip at *15.

      It is the cancellation of the claims that prevented the appeal it appears.

      1. 7.1.1

        Something curious, though, according to the litigation search as part of the reexam record, the appeal was docketed on Sept. 18, 2014, but the appeal from the lost reeaxamination was dismissed on Jan. 30, 2015. (I don’t know why it was dismissed.)

        But it appears that PUP did not appeal validity or infringement even while the appeal of the lost reexamination was still pending.

        The reexamination certificate canceling the claims issued on March 13, 2015. This was during the pendency of the present appeal.

      2. 7.1.2

        It is the cancellation of the claims that prevented the appeal it appears.

        Ned, the claim construction sought for the term “document” by PUM in its non-asserted patent claims — a broader construction than that given by the district court — would not have changed the outcome of its case against Google or the IPR.

        That’s what prevented the appeal.

  3. 6

    I think there’s some confusion about the facts here that is leading to different judgment calls in the comments.

    The claims specifically asserted against Google were found invalid and non-infringed at the district court. The same claims were canceled in the IPR proceeding.

    The patentee asked that the “document” construction be vacated (in spite of the fact that the patentee’s preferred, broader construction of the term would have no effect on the result in the IPR or in its infringement case against Google) because of its potential effect on other claims in related patents.

    In other words, as per the particular claims asserted against this defendant, the patentee had lost its right to appeal the claim construction issue (without filing a frivolous appeal — is that ever a good idea?).

    It seems to me under these circumstances that issue preclusion would not apply to permanently fix the construction of the term “document” in all of the patentee’s related patents. That said, the patentee’s construction seems problematic on its face while the district court’s construction seems reasonable so the end result of all this, as I wrote earlier, is that the patentee is stuck with the district court’s construction with or without “issue preclusion.”

    1. 6.2

      mmm one might think a final order of a US District judge does represent a full and fair opportunity to litigate an issue….isn’t it already assumed that each court involved in a new litigation can do its own claim construction? Where would estoppel on claim construction from another court arise in the first place, with or without an appeal?

  4. 5

    ?? If the claim construction they tried to get here was broader, so as to allegedly be infringed by others, how could that have helped them in the IPR, where what they obviously needed was a narrower claim interpretation or a narrowing amendment to avoid the prior art? Did they try to make illogically reversed inconsistent claim interpretations in the two proceedings on the same claims? Also, how would a denial of an appeal lacking any jurisdiction help make any other D.C. less likely to accept the uncontested claim interpretation of this D.C.?

    1. 5.1

      Paul, the claims are already cancelled — gone. Because of this, they could not appeal the invalidity holding, and without that, there was no case or controversy.

      The ONLY way they could have proceeded was to challenge the claim cancellation in a collateral attack in court. But that could be met by a waiver argument as they should have presented the constitutional challenge directly to the Federal Circuit in an appeal of the inter partes reexamination.

      Again, a major screw up by all concerned here by not preserving their rights.

      1. 5.1.1

        Paul, the claims are already cancelled

        The asserted claims against Google were canceled. The patentee has other claims in related patents (and possible in the asserted patents — I’m not sure) that were not asserted but which do contain the term “document”.

  5. 4

    PUP could have appealed the claim construction if it had appealed both validity and noninfringement. However, “[T]he U.S. Patent and Trademark Office cancelled all asserted claims in inter partes reexamination.” Slip at * 15.

    IF the claims no longer exist in the patent, how can PUP appeal validity? Certainly the cancellation itself denies PUP a full and fair opportunity.

    This is the ideal place for an aggrieved patent owner to raise the constitutionality of IPR and reexaminations in view of Stern v. Marshall and In re Lockwood, authority subsequent to the last time the Federal Circuit reviewed this issue. However, by not raising it, I think PUP may have waived their constitutional rights.

    1. 2.1

      you’re nice to Dennis but not to anyone else? Why is that

      Must be the red hair. Kinda reminds me of Opie from The Andy Griffith Show. Everybody loved that kid, especially Aunt Bea.

  6. 1

    DC: the appellate court’s refusal to hear the appeal is potentially sufficient to negate the presumption that the patentee had a full and fair opportunity to litigate the issue. Thus, the result may be no issue preclusion.

    Insightful. Thanks, Dennis.

    Probably won’t make any difference for this patentee (there is nothing wrong with the district court’s claim construction and much that is wrong with the patentee’s construction) but it could matter for others.

      1. 1.1.1

        Ned, I agree. Choosing not to appeal the invalidity and non-infringement is itself a full and fair opportunity. Mistake of counsel thinking you would have Article III standing at the appellate level on only claim construction won’t negate the known opportunity.

        Good example, BB Hardware v. Hargis:
        Granted, one can seek judicial review of a TTAB registration decision in
        a de novo district court action, and some courts have concluded from this that Congress does not want unreviewed TTAB decisions to ground issue preclusion. See, e.g., American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F. 2d 3, 9–10 (CA5 1974). But that conclusion does not follow. Ordinary preclusion law teaches that if a party to a court proceeding does not challenge an adverse decision, that decision can have preclusive effect in other cases, even if it would have been reviewed de novo. See Restatement (Second) of Judgments §28, Comment a and Illustration 1 (explaining that the failure to pursue an appeal does not undermine issue preclusion and including an example of an apparently unappealed district court’s dismissal for failure to state a claim); cf. Federated Department Stores, Inc. v. Moitie, 452 U. S. 394, 398 (1981)
        (noting “the res judicata consequences of a final, unappealed judgment on the merits”).
        – Slip at * 13.


          I should note that it probably is by no means a closed issue – “if a party to a court proceeding does not challenge an adverse decision, that decision can have preclusive effect in other cases” – could also mean PUM did try to challenge the adverse decision (claim construction) and therefore bar issue preclusion.

          Kinda like stubbing your toe, and then falling down a hill. The patentee thought he could save time and money by only appealing the claim construction because he knew in the future he would need to address it. But instead, after he already appealed and spent time on the claim construction, the next litigation round he will need to spend time and money on claim construction again.


            slaf, it is worse than that. Since they are bound, any infringement theory that tries to erase the adverse construction is a non starter and may result in an attorney fee award.

            Litigation counsel really blew this one for its clients.


              Ned, saying things like your last line above about another practicing attorney can have different consequences from the things you say about judges. Nor do you have any anonymity. For your own protection I suggest you at least add the magic words “In my opinion” before comments like that.

Comments are closed.