In Re: Arunachalam , 709 F. App'x 699 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: LAKSHMI ARUNACHALAM,
Appellant
______________________
2016-1607
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/010,417.
______________________
Decided: October 3, 2017
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LAKSHMI ARUNACHALAM, Menlo Park, CA, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by KAKOLI
CAPRIHAN, SARAH E. CRAVEN, THOMAS W. KRAUSE.
______________________
Before NEWMAN, CLEVENGER, and CHEN, Circuit
Judges.
PER CURIAM.
Lakshmi Arunachalam, proceeding pro se, owns U.S.
Patent No. 6,212,556 (’556 Patent), which is a continua-
tion-in-part of another patent that she owns, U.S. Patent
No. 5,987,500 (’500 Patent). An ex parte reexamination of
2 IN RE: ARUNACHALAM
the ’556 Patent resulted in the Patent Trial and Appeal
Board (Board) concluding that certain claims of the patent
were unpatentable as either anticipated or obvious. Dr.
Arunachalam appeals the Board’s decision. However, the
ʼ556 Patent claims before the Board are not materially
different from certain claims of the ’500 Patent that were
previously invalidated by a district court. Nor are they
materially different from other patent claims of Dr. Aru-
nachalam’s in which we applied collateral estoppel to bar
her from challenging a prior Board unpatentability deci-
sion. As with her appeal from that prior Board decision,
we conclude that collateral estoppel bars Dr. Arunacha-
lam from challenging the Board’s decision in this case.
Moreover, after carefully considering her briefs, we fur-
ther conclude that Dr. Arunachalam failed to show re-
versible error in the Board’s unpatentability decision. In
view of the foregoing, we affirm the Board’s decision.
INTRODUCTION
A. Technology
The ’556 Patent and the ’500 Patent are generally di-
rected to systems and methods that allow a user to en-
gage in real-time, two-way transactions over networks,
such as the Internet. See, e.g., ’556 Patent at [57] (Ab-
stract); ’500 Patent at [57] (Abstract). This real-time
transaction can be achieved using what the patents
describe as a “value-added network” (VAN) switch. See
’556 Patent col. 2 ll. 42–56; ’500 Patent col. 2 ll. 32–42.
For example, the VAN switch allows a user to purchase
goods and services from a merchant over the Internet, i.e.,
engage in a real-time, two way transaction, see ’556
Patent col. 5 l. 53–col. 6 l. 31; ’500 Patent col. 5 ll. 16–61,
whereas before, the user was able to only view the offered
goods and services and could not engage in a transaction,
see ’556 Patent col. 1 l. 46–col. 2 l. 39; ’500 Patent col. 1 l.
34–col. 2 l. 28.
IN RE: ARUNACHALAM 3
Figure 6A of the patents help conceptualize the
claimed invention.
According to the patents, exchange 501 and manage-
ment agent 601 “constitute a [VAN] switch” and “may
take on different roles as necessary” to enable real-time,
two-way transactions, ’556 Patent col. 8 ll. 17–21; see also
’500 Patent col. 7 ll. 42–46, but little else is said as to how
the VAN switch specifically goes about handling such
transactions.
Independent claim 1 of each patent exemplifies the
claimed inventions.
1. A switch for enabling real-time transactions on a
value-added network, comprising:
means for switching to a transactional application
in response to a user specification from a network
application;
means for transmitting a transaction request from
the transactional application; and
means for processing the transaction request, in-
cluding performing object routing.
4 IN RE: ARUNACHALAM
ʼ556 Patent col. 30 ll. 59–67 (emphases added).
1. A configurable value-added network switch for
enabling real-time transactions on a network, said
configurable value-added network switch com-
promising:
means for switching to a transactional application
in response to a user specification from a network
application, said transactional application provid-
ing a user with a plurality of transactional ser-
vices managed by at least one value-added
network service provider, said value-added net-
work service provider keeping a transaction flow
captive, said plurality of transactional services be-
ing performed interactively and in real time;
means for transmitting a transaction request from
said transactional application; and
means for processing said transaction request.
ʼ550 Patent col. 9 ll. 44–57 (emphases added).
B. Litigation History of the ’500 Patent
Dr. Arunachalam, through her company, Pi-Net In-
ternational, Inc. (Pi-Net), previously asserted claims 1–6,
10–12, 14–16, and 35 (asserted claims) of the ʼ500 Patent
in the United States District Court for the District of
Delaware (district court), but the district court eventually
declared the asserted claims invalid. See generally Pi-Net
Int’l Inc. v. JPMorgan Chase & Co., 42 F. Supp. 3d 579,
588–94 (D. Del. 2014) (deeming claims invalid as indefi-
nite, for lack of enablement, and for lack of written de-
scription). The district court held that the claim terms
“VAN switch,” “switching,” and “value-added network
system,” which were used across the asserted claims, were
indefinite. Id. at 590. The district court also held that
the asserted claims were not enabled. See id. at 592(“[T]he specification does not actually define, in language
IN RE: ARUNACHALAM 5
that would allow a person of ordinary skill in the art to
make and use the invention, what a ‘VAN switch’ is and
how it accomplishes ‘object routing’ or real-time transac-
tions. Instead, the specification presents an abstract
concept of real-time transactions, in which a merchant
and a user interact.” (citation omitted)). And the district
court found that the asserted claims did not have suffi-
cient written description. See id. at 594 (“The crux of the
invention is ‘real-time’ transactions for the user; there is
no disclosure of how these occur. The [district] court
concludes that the [asserted claims of the ’500 Patent] . . .
are invalid for lack of written description.”).
“Pi-Net appealed, but that appeal was subsequently
dismissed for failure to prosecute after being unable to file
a brief that complied with [our] word-limit requirements.”
Arunachalam v. SAP America, Inc., No. 15-1424, slip
order at 4 (Fed. Cir. Sept. 23, 2016) (Arunachalam Order)
(citing Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F.
App’x 774 (Fed. Cir. 2015)). “Pi-Net filed a petition for
rehearing at this court, a petition for a writ of certiorari at
the Supreme Court of the United States, and a petition
for rehearing at the Supreme Court, all of which were
denied.” Id.Sometime during the district court litigation, SAP
America, Inc. (SAP) challenged the patentability of claims
1–6, 10–12, 14–17, and 35 (challenged claims) of the ʼ500
Patent through an inter partes review (IPR). See id. at 4.
The Board concluded that these challenged claims were
unpatentable. Id. Dr. Arunachalam appealed the Board’s
conclusions. Id. SAP argued that Dr. Arunachalam was
collaterally estopped from appealing the Board’s decision
concerning the challenged claims of the ʼ500 Patent
because the district court had already declared them
invalid. See id. SAP extended this argument to claim 17,
which was not asserted in the district court litigation. See
id. at 4–5. We agreed with SAP. In doing so, we ex-
plained that:
6 IN RE: ARUNACHALAM
“Where a patent has been declared invalid in a
proceeding in which the ‘patentee has had a full
and fair chance to litigate the validity of his pa-
tent,’ the patentee is collaterally estopped from re-
litigating the validity of the
patent.” . . . [C]ollateral estoppel is not limited “to
patent claims that are identical. Rather, it is the
identity of the issues that were litigated that de-
termines whether collateral estoppel should ap-
ply.”
Id. at 4–5 (alteration and citation omitted) (first quoting
Miss. Chem. Corp. v. Swift Agric. Chems. Corp., 717 F.2d
1374, 1376 (Fed. Cir. 1983); and then quoting Ohio Willow
Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342 (Fed.
Cir. 2013)).
We then concluded that Dr. Arunachalam was collat-
erally estopped from appealing the Board’s decision with
respect to the claims of the ʼ500 Patent that were asserted
in the district court and challenged in the IPR because
these claims had already been declared invalid in the
district court litigation. See id. at 5. We also concluded
that she was collaterally estopped from appealing the
Board’s decision with respect to challenged claim 17 of the
’500 Patent, even though that claim had not been asserted
in the district court litigation, because it was not materi-
ally different than the claims of the ʼ500 Patent asserted
in the district court. See id. at 7 (“‘[T]he differences be-
tween the unadjudicated patent claims and adjudicated
patent claims do not materially alter the question of
invalidity’ here, [so] ‘collateral estoppel applies.’” (quoting
Ohio Willow, 735 F.3d at 1342)). Of particular relevance
to our collateral estoppel decision, we noted that claim 17
contained the VAN switch limitation, which the district
court previously held was not enabled in the other assert-
ed claims of the ʼ500 Patent. See id. It was of no import
that the claims of the ʼ500 Patent were adjudicated in
different fora. See id. at 6–7 (first citing In re Freeman,
IN RE: ARUNACHALAM 7
30 F.3d 1459, 1468–69 (Fed. Cir. 1994); and then citing B
& B Hardware, Inc. v. Hargis Indus., Inc., __ U.S. __, 135
S. Ct. 1293, 1303 (2015)). Further, we observed that Dr.
Arunachalam was represented at all times by counsel
during the district court litigation involving the ʼ500
Patent, and thus, she already had a full and fair oppor-
tunity to defend its patentability. See id. at 5–6. We,
therefore, declined to disturb the Board’s decision con-
cerning the challenged claims of the ʼ500 Patent and
dismissed the appeal as moot. See id. at 7.
C. Litigation History of the ’556 Patent
In the present case, Microsoft Corporation requested
an ex parte reexamination of the ’556 Patent, and the
Board found that claims 1–13, 15–23, 25–27, and 29 were
unpatentable as anticipated and held that claims 14 and
28 were unpatentable as obvious. Dr. Arunachalam
appeals the Board’s decision in the reexamination. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A)
(2012).
DISCUSSION
The Patent and Trademark Office (PTO) contends
that Dr. Arunachalam’s appeal should be dismissed
because she is collaterally estopped from arguing the
patentability of the challenged claims of the ’556 Patent
as a result of JPMorgan, where the district court invali-
dated certain claims of the ʼ500 Patent. See Appellee Br.
at 17–23. Specifically, every challenged claim of the ʼ556
Patent “recites a limitation [from the ʼ500 Patent that
was] held in JPMorgan to be indefinite or non-enabled,”
i.e., “‘switch,’ ‘switching,’ and/or a ‘means for switching’ to
enable “real-time transactions.” Id. at 19. In liberally
construing Dr. Arunachalam’s briefing, we understand
her to challenge the applicability of collateral estoppel in
this appeal, but she offers no explanation as to why we
should not apply collateral estoppel, as we did in the
8 IN RE: ARUNACHALAM
Arunachalam Order, and affirm the PTO’s decision. We
thus agree with the PTO.
As noted, where a patentee has had a full and fair op-
portunity to litigate the validity of a patent in one pro-
ceeding, but is ultimately unsuccessful, the patentee is
collaterally estopped from relitigating the validity or
patentability of the patent in a later proceeding. See
Miss. Chem., 717 F.2d at 1376. And notwithstanding any
differences between the patent claims in the two proceed-
ings, collateral estoppel is still applicable because the
focus is on “the identity of issues” that has been litigated
in both proceedings. Ohio Willow Wood, 735 F.3d at 1342.
Here, we again conduct the analysis that guided our
decision in the Arunachalam Order. Our comparison of
the challenged claims of the ʼ556 Patent that were
deemed unpatentable by the Board with the asserted
claims of the ʼ500 Patent that were declared invalid by
the district court reveals that any differences between the
two sets of claims are not material such that those differ-
ences would affect the patentability of the challenged
claims of the ʼ556 Patent. Compare, e.g., ʼ556 Patent col.
30 ll. 57–59 (independent claim 1), id. col. 31 ll. 39–58
(independent claim 13), and id. col. 32 ll. 44–67 (inde-
pendent claim 26), with ʼ500 Patent col. 9 ll. 44–57 (inde-
pendent claim 1), and id. col. 10 ll. 34–48 (independent
claim 10). Every challenged claim of the ʼ556 Patent
contains the terms “switch,” “switching,” or a “means for
switching” in the context of enabling two-way, real-time
transactions—all terms that have been the bases for
declaring other claims invalid as indefinite, for lack of
enablement, and for lack of written description in JPMor-
gan. See 42 F. Supp. 3d at 588–94.
Moreover, despite that the ʼ556 Patent is a continua-
tion-in-part of the ʼ500 Patent with additional disclosures,
the ʼ556 Patent’s discussion concerning these specific
terms remains nearly identical to its counterpart in the
IN RE: ARUNACHALAM 9
ʼ500 Patent. Compare, e.g., ʼ556 Patent col. 1 l. 20–col. 10
l. 12, with ʼ500 Patent col. 1 l. 11–col. 9 l. 31. The ʼ556
Patent’s additional disclosures do not further explain
what a “VAN switch” is or how it enables two-way, real-
time transactions. See ʼ556 Patent figs. 9–22; id. col. 10 1.
13–col. 30 l. 57. And Dr. Arunachalam’s briefs point to no
evidence in the additional disclosures that addresses the
§ 112 issues.
In light of Dr. Arunachalam’s previous opportunity to
litigate the validity of the asserted claims of the ’500
Patent, which contain the terms “switch,” “switching,”
and a “means for switching,” we see no reason to allow
her to appeal the patentability of the challenged claims of
the ʼ556 Patent, which also contain the same critical
terms. 1
Furthermore, Dr. Arunachalam has failed to show the
Board committed a reversible error in its decision to
affirm the Examiner’s anticipation and obviousness
rejections over Ginter. Dr. Arunachalam’s briefs list a
number of claim constructions and conclusory statements,
but they do not adequately explain how these construc-
tions overcome the Examiner’s findings of anticipation
and obviousness. Accordingly, Dr. Arunachalam’s argu-
ments on the merits are not persuasive.
1 We note that Securities & Exchange Commission
v. Chenery Corp., 318 U.S. 80 (1943) does not apply here
because collateral estoppel is a legal finding that does not
require new fact finding. Canonsburg Gen. Hosp. v.
Burwell, 807 F.3d 295, 304 (D.C. Cir. 2015) (“Chenery
does not apply to legal principles like [collateral estop-
pel].” (citations omitted)).
10 IN RE: ARUNACHALAM
All of Dr. Arunachalam’s remaining arguments for re-
versing the Board’s decision are unavailing. 2
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion.
AFFIRMED
COSTS
No Costs.
2 We deny Dr. Arunachalam’s two motions seeking
to have us certify certain purported legal questions to the
United States Supreme Court as she has not precisely
identified any question of national importance that should
be decided before we resolve this appeal. See U.S. Sup.
Ct. R. 19(a); see also White v. Johnson, 282 U.S. 367, 371
(1931) (“The [C]ourt has repeatedly held that it will not
answer questions of objectionable generality.” (citations
omitted)).