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e.Digital Corp. v. Futurewei Technologies, Inc.

United States Court of Appeals, Federal Circuit

November 19, 2014

E.DIGITAL CORPORATION, Plaintiff-Appellant,
v.
FUTUREWEI TECHNOLOGIES, INC., doing business as Huawei Technologies (USA), AND HUAWEI DEVICE USA, INC., Defendants-Appellees. E.DIGITAL CORPORATION, Plaintiff-Appellant,
v.
PANTECH WIRELESS, INC., also known as Pantech North America, PANTECH CO. LTD. AND GOPRO, INC., Defendants-Appellees

Page 724

Appeal from the United States District Court for the Southern District of California in No. 3:13-cv-00783-DMS-WVG, Judge Dana M. Sabraw. Appeals from the United States District Court for the Southern District of California in Nos. 3:12-cv-02899-DMS-WVG and 3:13-cv-00023-DMS-WVG, Judge Dana M. Sabraw.

ANTON N. HANDAL, Handal & Associates, of San Diego, California, argued for plaintiff-appellant. With him on the brief was PAMELA C. CHALK.

JOSE L. PATIÑ O, Foley & Lardner LLP, of San Diego, California, argued for all defendants-appellees. With him on the brief for defendants-appellees Futurewei Technologies, Inc., et al., were NICOLA A. PISANO and CHRISTOPHER C. BOLTEN.

KEVIN M. O'BRIEN, Baker & McKenzie LLP, of Washington, DC, for defendant-appellees Pantech Wireless, Inc., et al. With him on the brief were D. JAMES PAK, MATT DUSHEK and YI FANG.

HECTOR J. RIBERA, Fenwick & West LLP, of Mountain View, California, for defendant-appellee GoPro, Inc. With him on the brief were MICHAEL J. SACKSTEDER, CAROLYN CHANG and BRYAN A. KOHM.

Before MOORE, O'MALLEY, and REYNA, Circuit Judges.

OPINION

Page 725

Moore, Circuit Judge

e.Digital Corporation appeals from a U.S. District Court for the Southern District of California judgment of non-infringement based on a determination that e.Digital was collaterally estopped from seeking a construction of a claim limitation in e.Digital's U.S. Patent Nos. 5,491,774 and 5,839,108 different from another court's previous construction of the same limitation in the '774 patent. We hold that the district court correctly applied collateral estoppel to the '774 patent, but improperly applied the doctrine to the unrelated '108 patent. We also hold that the court did not abuse its discretion when it converted a stipulated partial judgment into a final judgment pursuant to Fed.R.Civ.P. 54(b). We affirm-in-part, reverse-in-part, and remand for further proceedings consistent with this opinion.

Background

Prior to the cases at issue in this appeal, e.Digital asserted claims 1 and 19 of the '774 patent in the U.S. District Court for the District of Colorado (Colorado Court). The '774 patent discloses a device with a microphone and a removable, interchangeable flash memory recording medium that allows for audio recording and playback. '774 patent col. 3 ll. 50-64. Asserted claims 1 and 19 recited " a flash memory module which operates as sole memory of the received processed sound electrical signals" (sole memory limitation). Id. col. 9 ll. 9-11, col. 12 ll. 54-55. The court construed the sole memory limitation to require " that the device use only flash memory, not RAM or any other memory system" to store the " received processed sound electrical signals." e.Digital Corp. v. Pentax of Am., Inc., No. 09-cv-02578, 2011 WL 2560069, at *8 (D. Colo. June 28, 2011). The court based its construction on the written description of the '774 patent and its determination that the use of RAM had been disclaimed during prosecution. Id. at *5-6. e.Digital argued that, because a microprocessor requires RAM to operate, and the claimed device performed tasks that involved a microprocessor, the device must use RAM. The Colorado Court held, however, that the existence of a microprocessor did not require the use of RAM because certain types of flash memory " could be directly addressed by the microprocessor in the same way that RAM could, such that one could replace that RAM with the appropriate flash memory." No. 2014-1019 J.A. 152. Based on the claim construction, the parties to the Colorado litigation stipulated to dismiss the case with prejudice, which the Colorado Court granted.

After the Colorado case, the United States Patent and Trademark Office cancelled claims 1 and 19 of the '774 patent in an ex parte reexamination. '774 patent col. 2 l. 58-col. 4 l. 38 (ex parte reexamination certificate). It issued reexamined claim 33, which recites the limitations of cancelled claims 1 and 19, including the identical sole memory limitation, and added additional limitations like a microprocessor. Id.

e.Digital brought suit against Woodman Labs, Inc. d/b/a GoPro (GoPro), Pantech Wireless, Inc. and Pantech Co. Ltd. (together, Pantech), Futurewei Technologies, Inc. and Huawei Device USA (together, Huawei), and Apple Inc. in the Southern District of California, asserting reexamined claim 33 and claims 2 and 5 of the '108 patent. The court ...


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