Case: 19-1223 Document: 51 Page: 1 Filed: 02/13/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
LAKSHMI ARUNACHALAM,
Plaintiff-Appellant
v.
PRESIDIO BANK,
Defendant-Appellee
______________________
2019-1223
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:12-cv-04962-TSH,
Magistrate Judge Thomas S. Hixson.
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SAP AMERICA, INC.,
Plaintiff-Appellee
v.
LAKSHMI ARUNACHALAM,
Defendant-Appellant
______________________
2019-1794
______________________
Case: 19-1223 Document: 51 Page: 2 Filed: 02/13/2020
2 ARUNACHALAM v. PRESIDIO BANK
Appeal from the United States District Court for the
Northern District of California in No. 4:13-cv-01248-PJH,
Judge Phyllis J. Hamilton.
______________________
Decided: February 13, 2020
______________________
LAKSHMI ARUNACHALAM, Menlo Park, CA, pro se.
CANDICE C. DECAIRE, Kilpatrick Townsend & Stockton
LLP, Seattle, WA, for defendant-appellee in 2019-1223.
Also represented by ANDREW JAMES ISBESTER, San Fran-
cisco, CA.
THARAN GREGORY LANIER, Jones Day, Palo Alto, CA, for
plaintiff-appellee in 2019-1794. Also represented by
JOSEPH BEAUCHAMP, Houston, TX.
______________________
Before LOURIE, MOORE, and CHEN, Circuit Judges.
PER CURIAM.
Dr. Lakshmi Arunachalam, proceeding pro se, appeals
two decisions from the U.S. District Court for the Northern
District of California. The first relates to a patent infringe-
ment suit filed by Dr. Arunachalam against Presidio Bank.
The second relates to a declaratory judgment action filed
by SAP America, Inc. Both decisions concluded that Dr.
Arunachalam was collaterally estopped from asserting the
patents in question because many of the patent claims al-
ready had been invalidated in prior cases, and the remain-
ing claims all suffered from the same defect that led to the
invalidity of the previously litigated claims. See Pi-Net
Int’l Inc. v. JPMorgan Chase & Co.,
42 F. Supp. 3d 579 (D.
Del. 2014); SAP Am. Inc. v. Arunachalam, No. IPR2013-
00194 (PTAB Sept. 18, 2014); SAP Am. Inc. v. Arunacha-
lam, IPR2013-00195 (PTAB Sept. 18, 2014); SAP Am. Inc.
Case: 19-1223 Document: 51 Page: 3 Filed: 02/13/2020
ARUNACHALAM v. PRESIDIO BANK 3
v. Arunachalam, No. CBM2013-00013 (PTAB Sept. 18,
2014); and SAP Am. Inc. v. Arunachalam, No. CBM2014-
00018 (PTAB Mar. 6, 2015). Because the decisions apply
collateral estoppel for the same reasons, we address both
cases together. For the reasons explained below, we affirm.
I. PROCEDURAL HISTORY
Dr. Arunachalam’s case against Presidio Bank as-
serted patent infringement of numerous claims of U.S. Pa-
tent Nos. 5,987,500 (the ’500 patent) and 8,108,492 (the
’492 patent). SAP’s case requested declaratory judgment
of non-infringement of all claims for the ’500 patent, the
’492 patent, and
U.S. Patent No. 8,037,158 (the ’158 pa-
tent).
While these cases were pending, the U.S. District
Court for the District of Delaware in JPMorgan invalidated
claims 1–6, 10–12, 14–16, and 35 of the ’500 patent; claims
1–8 and 10–11 of the ’492 patent; and claim 4 of the ’158
patent. JPMorgan,
42 F. Supp. 3d 579. Moreover, in addi-
tion to its declaratory judgment action, SAP also filed for
inter partes review (IPR) and covered business method
(CBM) review of those patents. The Patent Trial and Ap-
peals Board (the Board) in the IPRs and CBMs entered its
decisions after the district court in JPMorgan entered its
decision. The Board found claims 1–6, 10–12, 14–17, and
35 of the ’500 patent; claims 1–8 and 10–12 of the ’492 pa-
tent; and claims 1–6 and 9–11 of the ’158 patent unpatent-
able. Appeal Order, Arunachalam v. SAP Am. Inc., No.
2015-1424 at 4 (Fed. Cir. Sept. 23, 2016). Dr. Arunachalam
appealed the Board’s decisions and we dismissed the ap-
peal because Dr. Arunachalam was collaterally estopped
from challenging the Board’s decision in light of JPMorgan.
Id. at 7. In our decision, we held Dr. Arunachalam collat-
erally estopped from challenging the Board’s decision to in-
validate claims that were not invalidated in JPMorgan
because those claims “suffer[ed] from at least one of the
same fatal lack-of-enablement flaws” as the claims
Case: 19-1223 Document: 51 Page: 4 Filed: 02/13/2020
4 ARUNACHALAM v. PRESIDIO BANK
invalidated in JPMorgan. Id. at 5. In other words, because
the additional claims suffered from the same invalidating
defect as the claims invalidated in JPMorgan, we ruled
that those additional claims likewise could not survive.
As a result, by the time the district court in the cases
on appeal entered its decisions, the only claims not invali-
dated were claims 7–9, 13, and 18–34 of the ’500 patent;
claims 9 and 13 of the ’492 patent; and claims 7 and 8 of
the ’158 patent. See id. at 3–4. Applying similar reasoning
we used in our 2016 Arunachalam decision, the district
court, in both decisions, held that Dr. Arunachalam was
collaterally estopped from asserting all claims of the as-
serted patents, because the patent claims that had not been
previously invalidated in earlier litigation nevertheless
suffered from the same invalidating defect as the previ-
ously litigated claims.
II. DISCUSSION
When reviewing the application of collateral estoppel,
we are “generally guided by regional circuit precedent, but
we apply our own precedent to those aspects of such a de-
termination that involve substantive issues of patent law.”
Ohio Willow Wood Co. v. Alps South, LLC,
735 F.3d 1333,
1342 (Fed. Cir. 2013). In the Ninth Circuit, “[c]ollateral
estoppel applies to a question, issue, or fact when four con-
ditions are met: (1) the issue at stake was identical in both
proceedings; (2) the issue was actually litigated and de-
cided in the prior proceedings; (3) there was a full and fair
opportunity to litigate the issue; and (4) the issue was nec-
essary to decide the merits.” Oyeniran v. Holder,
672 F.3d
800, 806 (9th Cir. 2012). “Where a patent has been de-
clared invalid in a proceeding in which the ‘patentee has
had a full and fair chance to litigate the validity of h[er]
patent,’ . . . the patentee is collaterally estopped from relit-
igating the validity of the patent.” Miss. Chem. Corp. v.
Swift Agric. Chems. Corp.,
717 F.2d 1374, 1376 (Fed. Cir.
1983) (quoting Blonder-Tongue Labs., Inc. v. Univ. of Ill.
Case: 19-1223 Document: 51 Page: 5 Filed: 02/13/2020
ARUNACHALAM v. PRESIDIO BANK 5
Found.,
402 U.S. 313, 333 (1971)). Further, “[o]ur prece-
dent does not limit collateral estoppel to patent claims that
are identical. Rather, it is the identity of the issues that
were litigated that determines whether collateral estoppel
should apply.” Ohio Willow Wood, 735 F.3d at 1342 (em-
phasis in original).
To the extent that Dr. Arunachalam challenges the de-
cisions in cases other than the cases directly on appeal
here, including JP Morgan and the above-referenced Board
decisions, Dr. Arunachalam was required to make those
challenges in direct appeals from those cases. See Pers. Au-
dio, LLC v. CBS Corp.,
946 F.3d 1348 (Fed. Cir. 2020); Aru-
nachalam v. Int’l Bus. Machs. Corp., 759 F. App’x 927 (Fed.
Cir. 2019). As such, we will not address those challenges
here. See Pers. Audio,
946 F.3d 1348; Int’l Bus. Machs.
Corp., 759 F. App’x 927. Regarding Dr. Arunachalam’s
challenges and motions under Fletcher v. Peck, 10 U.S. (6
Cranch) 87 (1810), and “prosecution history estoppel” un-
der Aqua Products, Inc. v. Matal,
872 F.3d 1290 (Fed. Cir.
2017) (en banc), we have previously addressed these argu-
ments, stating that “[t]he Supreme Court in Oil States En-
ergy Services, LLC v. Greene’s Energy Group, LLC, —
U.S.—,
138 S. Ct. 1365, 1375 & n.2, 1377–78,
200 L. Ed. 2d
671 (2018) rejected several similar constitutional chal-
lenges to the inter partes review process.” Int’l Bus. Machs.
Corp., 759 F. App’x at 933. Dr. Arunachalam has not pro-
vided any reason that the same reasoning does not apply
to a district court’s authority to invalidate a patent. Ac-
cordingly, we reject Dr. Arunachalam’s constitutional chal-
lenges and deny her motions raising those same
constitutional challenges.
As to Dr. Arunachalam’s challenges to the district
court’s decisions on collateral estoppel, we agree with the
district court that Dr. Arunachalam was collaterally es-
topped from asserting all claims under the ’500, ’492, and
’158 patents. First, we hold that Dr. Arunachalam contin-
ues to be collaterally estopped from challenging the
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6 ARUNACHALAM v. PRESIDIO BANK
invalidity of the claims held invalid in JPMorgan and the
Board decisions. Appeal Order, SAP Am. Inc., No. 2015-
1424.
We next turn to the claims that were not addressed in
the prior proceedings, which are claims 7–9, 13, and 18–34
of the ’500 patent; claims 9 and 13 of the ’492 patent; and
claims 7 and 8 of the ’158 patent. See Appeal Order, SAP
Am. Inc., No. 2015-1424, at 3–4.
As to the first condition for applying collateral estoppel
(identical issue), we find that the remaining claims in the
’500, ’492, and ’158 patents all rely on at least one of the
claim terms found indefinite, not enabled, or failing written
description by JPMorgan and that these remaining claims
do not significantly alter the analysis of those terms.
Claims 7–9, 13, and 18 of the ’500 patent; claims 9 and 13
of the ’492 patent; and claims 7 and 8 of the ’158 patent are
all dependent on previously invalidated independent
claims and do not cure the deficiencies identified in the
prior cases. See Appeal Order, SAP Am. Inc., No. 2015-
1424. Independent claims 19 and 27 of the ’500 patent war-
rant closer analysis. These claims are directed to a
“method of enabling object routing on a network” and “[a]n
object router on a network.” In JPMorgan, the district
court found several claims in the patents lacked enable-
ment because “the specification does not actually define, in
language 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 trans-
actions.” JPMorgan, 42 F. Supp. at 592. The district court
also found that “[t]he specification offers no explanation or
information on any software programs.” Id. at 593. As
such, the district court found that the term “object routing,”
like “VAN switch,” was not enabled. Id. at 592–93. For
claims 19 and 27, none of the claimed steps therein de-
scribe what object routing is or how it is accomplished.
Thus, the limitations recited in these claims do not cure the
lack of enablement identified in JPMorgan. Because
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ARUNACHALAM v. PRESIDIO BANK 7
claims 20–26 and 28–34 of the ’500 patent are dependent
on either claim 19 or 27 and do not cure the deficiencies in
the enablement of “object routing,” they likewise fail for the
same reason. Thus, the same issues are at stake in these
litigations.
Regarding the second condition for collateral estoppel,
whether the issues were previously litigated and decided,
it is beyond dispute that the claim terms addressed in
JPMorgan were previously litigated and finally decided.
The third condition is whether Dr. Arunachalam was given
a full and fair opportunity to litigate the issues. Dr. Aru-
nachalam was represented by counsel in the motions for
summary judgment in JPMorgan. We find this proceeding
to be a full and fair opportunity to litigate the issues. Fi-
nally, for the fourth condition, the claim terms addressed
in JPMorgan were determinative in the invalidity analysis.
Thus, the issue of the validity of the remaining claims of
the ’500, ’492, and ’158 patents satisfies all four collateral
estoppel conditions, and we find Dr. Arunachalam collater-
ally estopped from asserting these patents in the cases on
appeal.
CONCLUSION
We have considered the rest of Dr. Arunachalam’s ar-
guments, including her requests to disqualify opposing
counsel, and find them too skeletal and unpersuasive. Ac-
cordingly, we affirm the district courts’ decisions that Dr.
Arunachalam was collaterally estopped from asserting the
’500, ’492, and ’158 patents. We have also considered Dr.
Arunachalam’s remaining motions and deny those mo-
tions.
AFFIRMED
