Opinion
No. 2006-1411.
March 5, 2009. Rehearing and Rehearing En Banc Denied May 22, 2009.
Circuit Judge Moore did not participate in the vote.
Appeal from the United States District Court for the Eastern District of Texas in Case No. 2:03-CV-00007, Judge T. John Ward.
Henry C. Bunsow, Howrey LLP, of San Francisco, CA, argued for plaintiff-appellee. On the brief were Duane H. Mathiowetz, Rick C. Chang; and Patricia L. Peden, Law Office of Patricia L. Peden, of Oakland, CA; and Richard L. Stanley, Howrey LLP, of Houston, TX. Of counsel was Korula T. Cherian, Howrey LLP, of San Francisco, CA; and Helen E. Dutton, Farella Braun Martel LLP, of San Francisco, CA.
Nathan Lane, III, Squire, Sanders Dempsey, LLP, of San Francisco, CA, argued for defendant-appellant. With him on the brief were Joseph A. Meckes and Daniel B. Pollack. Of counsel on the brief was Phillip J. McCabe, Kenyon Kenyon, of San Jose, CA. Of counsel was Eric M. Albritton, Albritton Law Firm, of Longview, TX.
Before RADER, PLAGER, and GAJARSA, Circuit Judges.
In the instant case, a jury in the United States District Court for the Eastern District of Texas returned a verdict finding that Taiwan Sumida Electronics, Inc. ("Taiwan Sumida") contributed to or induced the infringement of claims 1, 2, 9, 12 and 18 of 02 Micro International, Ltd.'s ("02 Micro's") U.S. Patent No. 6, 396, 722 ("722 patent"), that the infringement was willful, and that those claims had not been proven invalid. The instant case is a companion case to Monolithic Power Systems, Inc. v. 02 Micro International, Ltd., No. 2008-1128, -1136 (the "MPS case"), decided by this court today. In the MPS case, this court holds that the same claims of 02 Micro's 722 patent are invalid as obvious under 35 U.S.C. § 103.
This court held in Mendenhall v. Barber-Greene Co., 26 F.3d 1573, 1577 (Fed. Cir. 1994) that "once the claims of a patent are held invalid in a suit involving one alleged infringer, an unrelated party who is sued for infringement of those claims may reap the benefit of the invalidity decision under principles of collateral estoppel." (citing Blonder-Tongue Labs., Inc. v. University of Ill. Found., 402 U.S. 313, 350, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971)). 02 Micro, in a letter to this court, has conceded that the judgment in the instant case cannot be upheld, as per Mendenhall, if this court affirms the invalidity judgment in the MPS case. Because today's judgment of invalidity of the asserted claims of the 722 patent in the MPS case collaterally estops 02 Micro from pursuing infringement claims against Taiwan Sumida based on the same claims of the 722 patent, this court vacates the judgment of the District Court for the Eastern District of Texas.
VACATED.
NO COSTS.