Judge Andrews Rules on Summary Judgment Finding No Issue Preclusion
May 31, 2017
Publication| Intellectual Property
In AVM Technologies, LLC v. Intel Corp., C.A. No. 15-33-RGA (D. Del. Apr. 17, 2017), Judge Andrews granted the plaintiff’s motion for summary judgment of no issue preclusion and denied the defendant’s cross-motion for summary judgment of no damages based on issue preclusion. Both motions were related to previous litigation between the parties before Judge Andrews, in which Judge Andrews granted summary judgment to the defendant, finding that the plaintiff had “no evidence with which to prove damages, and [did] not seek other relief.” The defendant argued that this prior ruling precluded the present plaintiff’s damages theory because the prior lump-sum demand encompassed the current request for “a reasonable royalty payment.” In illustrating its point, the defendant argued that had the plaintiff won damages in the first action, it could not seek damages in the second action for infringement of the same patent.
Judge Andrews disagreed. He explained that the prior ruling adjudicated the specific, limited issue that the “Plaintiff could not prove damages with respect to the accused products in [the first action] based on the evidence put forth in [the first action].” He explained that the prior holding “was much narrower” than the defendant argued and that “[t]he damages issues in [the first case] and the instant case d[id] not present the identical issue.” Therefore, Judge Andrews found that there was no issue preclusion.
Key Points: Parties may defeat claims of issue preclusion by drawing a distinction—procedural or substantive—between the prior holdings and the current action; the Court appears unlikely to find preclusion without clear symmetry.