Philips En Banc Decision Did Not Affect Law of the Case

In E-Pass Technologies, Inc. v. 3Com Corporation (also known as 3Com, Inc.), et al., on January 12, 2007, the Federal Circuit rejected E-Pass's argument that the district court inappropriately granted summary judgment when it elaborated upon the the appellate court's claim construction in a previous appeal, "E-Pass I," in light of the teachings of the appellate court's subsequent en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

In E-Pass I, the appellate court had overturned a claim construction that improperly limited the claim to encompass only devices having exact credit card dimensions. It went on to hold that "the ordinary meaning of the word ‘card’ . . . , as used in the phrase ‘electronic multi-function card,’ is the proper construction." Following the E-Pass I decision and prior to the lower court’s ruling on remand, the Federal Circuit decided Phillips. The lower court then partly relied upon that later decision in granting summary judgement.

According to the opinion by Circuit Judge Linn:

E-Pass argues that the district court disobeyed the mandate of this court by entering summary judgment in favor of the defendants as to the subject of the prior appeal, the "electronic multi-function card" limitation of claim 1 of the ’311 patent. It further argues that the district court disobeyed our mandate when it elaborated upon our claim construction in E-Pass I in light of the teachings of this court’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). We disagree as to each of these contentions.

E-Pass’s first argument rests in substantial part on our statement in E-Pass I that "issues of material fact remain in dispute as to both literal and doctrine of equivalents infringement under the proper construction" of the term "card." E-Pass I, 343 F.3d at 1365. That statement, however, must be read in context. As the very same sentence announced, we vacated the grant of summary judgment and remanded to the district court for further proceedings. Id. By vacating, we signaled that, although the district court’s prior decision rested upon erroneous grounds, a proper claim construction might support a judgment (summary or otherwise) in favor of either party, depending on the evidence and argument submitted to the district court on remand and considered by the district court in the first instance. Cf. Communities for Equity v. Mich. High Sch. Athletic Ass’n, 459 F.3d 676, 680 (6th Cir. 2006) (noting that when the Supreme Court grants a writ of certiorari, vacates, and remands, it "does not indicate, nor even suggest, that the lower court’s decision was erroneous").

. . . Indeed, we could not have intended to foreclose a summary judgment of noninfringement because the record did not yet contain the evidence that the parties would put forward in support of their infringement and noninfringement contentions under the proper construction.

Accordingly, the district court correctly concluded that it had the authority to entertain the defendants’ motions for summary judgment on remand. SJ Order, slip op. at 11, 12; see also Liquid Dynamics Corp. v. Vaughan Co., Inc., 449 F.3d 1209, 1220 (Fed. Cir. 2006) ("Issues not decided by the court in a prior proceeding are not covered by the law-of-the-case doctrine."). As the district court observed, we did not in E-Pass I "inten[d] . . . to preclude [the district court] from hearing a complete summary judgment motion as to the Palm VII on remand."1 SJ Order, slip op. at 12. As we discuss next, the district court on remand properly undertook a thorough and thoughtful analysis of the infringement issues, and in so doing, it followed our claim construction in E-Pass I.

A claim construction articulated by a prior panel decision of this court ordinarily remains the law of the case unless it is in conflict with a subsequent decision by this court sitting en banc or by the Supreme Court. See Cal. Fed. Bank v. United States, 395 F.3d 1263, 1274–75 (Fed. Cir. 2005) (declining to revisit earlier ruling where intervening en banc decision was not in direct conflict, and where Supreme Court analysis of the same issue controlled); see also United States v. Moran, 393 F.3d 1, 7 (1st Cir. 2004) ("[A] legal decision made at one stage of a criminal or civil proceeding should remain the law of that case throughout the litigation, unless and until the decision is modified or overruled . . . ."). Here, we see no conflict between the guidance provided in Phillips and the claim construction we articulated in E-Pass I. As we discuss below, see infra Part II.A.2, the district court correctly applied our construction as the governing definition of "card."

Nonetheless, any articulated definition of a claim term ultimately must relate to the infringement questions that it is intended to answer. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326 (Fed. Cir. 2006) ("[T]he legal function of giving meaning to claim terms always takes
place in the context of a specific accused infringing device or process."). The definition of "card" that we articulated in E-Pass I described the properties of a "card" relevant to the accused devices, and it thereby sufficed to determine the question of infringement. Thus, the district court’s observation that not
every "flat rectangular piece of stiff material" is a "card," see SJ Order, slip op. at 26, was not strictly necessary to its holding.

Even so, the district court’s observation was correct. . . .