Tse v. Apple Inc. , 635 F. App'x 864 ( 2015 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
HO KEUNG TSE,
Plaintiff-Appellant
v.
APPLE INC., MUSICMATCH, INC., SONY
NETWORK ENTERTAINMENT INTERNATIONAL
LLC,
Defendants-Appellees
______________________
2015-1639
______________________
Appeal from the United States District Court for the
Northern District of California in No. 4:06-cv-06573-SBA,
Judge Saundra Brown Armstrong.
______________________
Decided: November 5, 2015
______________________
HO KEUNG TSE, Hong Kong, China, pro se.
MICHAEL ALLEN JACOBS, Morrison & Foerster, LLP,
San Francisco, CA, for defendant-appellee Apple Inc. Also
represented by RICHARD HUNG, ESTHER KIM; BRIAN
ROBERT MATSUI, Washington, DC.
2 TSE v. APPLE INC.
DOUGLAS ETHAN LUMISH, Latham & Watkins LLP,
Menlo Park, CA, for defendant-appellee MusicMatch, Inc.
Also represented by PATRICIA YOUNG.
JOHN FLOCK, Kenyon & Kenyon, LLP, New York, NY,
for defendant-appellee Sony Network Entertainment
International, LLC. Also represented by MICHELLE
CARNIAUX.
______________________
Before PROST, Chief Judge, REYNA, Circuit Judge, and
STARK, Chief District Judge. ∗
PER CURIAM.
This appeal arises from an order of the United States
District Court for the Northern District of California
dismissing a patent infringement action filed by the
plaintiff, Ho Keung Tse, against Apple Inc., MusicMatch,
Inc., and Sony Network Entertainment International LLC
(collectively, “Defendants”). Tse asserted claims 1-5, 13,
16, 17, 20, and 23-26 of U.S. Patent No. 6,665,797 (“’797
patent”) against the Defendants. The district court dis-
missed the action based on the doctrine of collateral
estoppel. The district court noted that the same claims
were previously found invalid for lack of written descrip-
tion, Tse v. Google, Inc., 2013 WL 6502478 (N.D. Cal Dec.
11, 2013), and that we summarily affirmed that invalidity
determination, Tse v. Google, Inc., 571 F. App’x 951 (Fed.
Cir. 2014).
Because we agree that Tse’s action is barred by the
doctrine of collateral estoppel, we affirm the district
court’s dismissal order.
∗
Honorable Leonard P. Stark, Chief District Judge,
United States District Court for the District of Delaware,
sitting by designation.
TSE v. APPLE INC. 3
BACKGROUND
On August 5, 2005, Tse filed an action against the De-
fendants in the District of Maryland alleging infringe-
ment of the ’797 patent. The case was then transferred to
the Northern District of California. On July 24, 2007, the
Defendants initiated an ex parte reexamination proceed-
ing of all of the asserted claims of the ’797 patent and the
district court stayed the case pending conclusion of the
reexamination. While those proceedings were pending,
Tse sued Google, Inc.; Samsung Telecommunications
America, LLC; HTC America; and Blockbuster, LLC
alleging infringement of the same claims of the ’797
patent that are at issue here. On December 11, 2013, the
district court in that case (“the Google litigation”) found
claims 1-5, 13, 16, 17, 20, and 23-36 of the ’797 patent
invalid for lack of written description under 35 U.S.C.
§ 112. Tse v. Google, Inc., 2013 WL 6502478, at *6. Tse
appealed that ruling, and, on July 16, 2014, we summari-
ly affirmed the invalidity determination. Tse v. Google,
Inc., 571 F. App’x 951 (Fed. Cir. 2014). Tse then peti-
tioned for panel rehearing and rehearing en banc, both of
which we denied. Tse also filed a petition for writ of
certiorari from the Supreme Court, which was similarly
denied.
The district court in this case issued an order to show
cause, directing the parties to demonstrate why this
action should or should not be dismissed based on the
outcome of the Google litigation. The district court put a
five-page limit on the submissions. Tse submitted a brief
pursuant to the district court’s order but did not address
the applicability of collateral estoppel; instead, Tse pri-
marily argued that the invalidity determination in the
Google litigation was erroneous. The district court con-
cluded that Tse had ample opportunity in the Google
litigation to argue against invalidity and that the Google
court issued a reasoned and detailed order granting
summary judgment. Thus, the district court held that Tse
4 TSE v. APPLE INC.
was collaterally estopped from re-litigating the validity of
the same claims from the ’797 patent and dismissed the
action. Tse appeals from that dismissal.
DISCUSSION
We apply the law of the regional circuit to the applica-
tion of collateral estoppel. See Bayer AG v. Biovail Corp.,
279 F.3d 1340, 1345 (Fed. Cir. 2002). In the Ninth Cir-
cuit, the availability of collateral estoppel is a mixed
question of law and fact reviewed de novo. United States
v. Geophysical Corp. of Alaska, 732 F.2d 693, 697 (9th Cir.
1984). Once it is determined that collateral estoppel is
available, the Ninth Circuit reviews a district court’s
decision to accord preclusion and apply collateral estoppel
for an abuse of discretion. Dias v. Elique, 436 F.3d 1125,
1128 (9th Cir. 2006).
“The doctrine of collateral estoppel applies if (1) the
issue sought to be precluded from relitigation is identical
to the issue decided in the earlier proceeding; (2) the issue
was actually litigated in the former proceeding; (3) the
issue was necessarily decided in the former proceeding;
and (4) the person against whom collateral estoppel is
asserted was a party, or in privity with a party, to the
earlier proceeding.” Enovsys LLC v. Nextel Commc’ns,
Inc., 614 F.3d 1333, 1342-43 (Fed. Cir. 2010) (applying
California law). However, “a judgment of invalidity will
have no collateral estoppel effect if the patentee can show
that it did not have a full and fair opportunity to litigate.”
Pharmacia & Upjohn Co. v. Mylan Pharm., Inc., 170 F.3d
1373, 1379 (Fed. Cir. 1999) (citing Blonder-Tongue Labs.,
Inc. v. Univ. of Ill. Found., 402 U.S. 313, 329-334 (1971)).
On appeal, Tse first challenges the merits of the inva-
lidity determination in the Google litigation. That chal-
lenge fails, however, because the relevant inquiry here is
whether the district court properly applied collateral
estoppel, not whether the judgment of invalidity is cor-
TSE v. APPLE INC. 5
rect. Pharmacia & Upjohn, 170 F.3d at 1380 (“[O]ur role
is limited to reviewing the district court’s application of
collateral estoppel, not the correctness of the [underlying]
verdict[].”).
Tse next relies on language from Blonder-Tongue to
argue that, because the Google court “wholly failed to
grasp the technical subject matter,” Tse was unable to
fully and fairly litigate the validity of the ’797 patent in
the prior case. Blonder-Tongue, 402 U.S. at 333 (noting
that a factor in determining whether a patentee has had a
full and fair chance to litigate is whether “the opinions
filed by the District Court and the reviewing court, if any,
indicate that the prior case was one of those relatively
rare instances where the courts wholly failed to grasp the
technical subject matter and issues in suit”). This chal-
lenge also fails because Tse has not shown that this is
“one of those relatively rare instances.” Id. In fact, the
record indicates that the Google court fully grasped the
technical subject matter and provided a well-reasoned
order granting summary judgment, which we summarily
affirmed on appeal.
Finally, Tse argues that he was denied a full and fair
opportunity to contest collateral estoppel because he was
confined to a five-page brief in response to the district
court’s order to show cause. Tse did not, however, seek
additional briefing to address the issue of collateral
estoppel, and, in fact, spent the entire five pages of his
brief attacking the merits of the underlying judgment.
Moreover, Tse had the opportunity on appeal to contest
the collateral estoppel issue and again chose to primarily
focus on the merits of the invalidity determination. Thus,
the district court did not err in limiting the submissions
in response to its order to show cause to five pages.
6 TSE v. APPLE INC.
CONCLUSION
For the reasons stated above, we affirm the district
court’s dismissal of the action due to collateral estoppel.
AFFIRMED