Partial Summary Judgment May Not Be "Final" for Purposes of Collateral Estoppel If Claim Mooted Before Trial

The grant of partial summary judgment of non-infringement in a prior action did not necessarily preclude the plaintiff from bringing a later action against the same defendant for infringement of a reissue of the previously adjudicated patent. Vardon Golf Company, Inc., Karsten Mfg. Corp., Case No. 01-1557, 2002 U.S. App. LEXIS 12353 (Fed. Cir. June 21, 2002).

In Vardon I, Vardon accused Karsten of infringing two patents. Before suing, Vardon had filed a reissue application on the patent in suit. After the district court granted the Karsten’s motion for partial summary judgment of non-infringement on the patents, the U.S. Patent Trademark Office (PTO) granted reissue. To receive the reissue patent, Vardon surrendered the original patent, thereby mooting any potential appeal of the summary judgment of no infringement.

In Vardon II, Vardon again sued Karsten, this time for infringement of the reissue patent. The district court found that the asserted claims in the reissue patent were identical to those adjudicated in Vardon I and ruled that Vardon was collaterally estopped from bringing the same claim again.

On appeal, Karsten argued that the prior judgment was final for purposes of collateral estoppel because the plaintiff could have suspended the reissue proceedings, substituted the reissue patent at the appropriate time, or certified the district court’s decision on the original patent for appeal. Vardon argued that its failure to preserve its "theoretical" appellate rights on the partial summary judgment in Vardon I did not make an otherwise nonfinal and unappealable judgement "final" for collateral estoppel purposes.

The Federal Circuit reversed. Applying Seventh Circuit law, the Federal Circuit found that the grant of partial summary judgment was not final for purposes of collateral estoppel since the prior ruling never reached the state where it was "immune . . . to reversal or amendment," because it had been rendered moot and neither party had sought to have the partial summary judgement certified under Rule 54(b).