N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ HO KEUNG TSE, Plaintiff

- Appellant

v.

APPLE INC., MUSICMATCH, INC., SO NY NETWORK ENTERTAINMEN T 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, Ju dge Saundra Brown Armstrong.

______________________
Decided: November 5, 2015

______________________

H O K EUNG T SE , Hong Kong, China, pro se.

M ICHAEL A LLEN J ACOBS , Morrison & Foerster, LLP, San Francisco, CA, for defendant

- appellee Apple Inc. Also represented by R ICHARD H UNG , E STHER K IM ; B RIAN R OBERT M ATSUI , Washington, DC.TSE v. APPLE INC

. 2

D OUGLAS E THAN L UMISH , Latham & Watkins LLP, Menlo Park, CA, for d efendant -a ppellee MusicMatch, Inc. Also represented by P ATRICIA Y OUNG

.

J OHN F LOCK , Kenyon & Kenyon, LLP, New York, NY

, for d efendant -a ppellee Sony Network Entertainment Inter national, LLC. Also represented by M ICHELL E C ARNIAUX

.

______________________
Before P ROST , Chief Judge, R EYNA , Circuit Judge

, and S TARK , Chief D istrict Judge

. ∗

P ER C URIAM

. 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 Internationa l 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 di smissed the action based on the doctrine of collateral estoppel. The distric t court noted that the same claims were previously found invalid for lack of written descri ption, 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. A pp ’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

B ACKGROUND On August 5, 2005, Tse filed an action against the D efendants in the District of Marylan d alleging infring ement 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 procee ding of all of the asserted claims of the ’797 patent and the dis trict 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 ’7 97 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 writte n 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 summar ily affirmed the invalidity determination. Tse v. Google, Inc. , 57 1 F. App ’ x 951 (Fed. Cir. 2014). Tse then pet itioned for panel rehearing and rehearing en banc, bo th 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 shou ld 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; ins tead, Tse pr imarily argued that the invalidity determination in the Google litigation was erroneous. The district court co ncluded that Tse had ample opportunity in the Google litigation to argue against invalidity and that the Google court issued a reason ed and detailed order granting summary judgment. Thus, the district court held that TseTSE v. APPLE INC

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was collaterally estopped from re

- litigat ing the validity of the same claims from the ’797 patent and dismissed the action. Tse appeals from that dismissal.

D ISCUSSION We apply the law of the regional circuit to the applic ation of collateral estoppel. See Bayer AG v. Biovail Corp.

, 279 F.3d 1340, 1345 (Fed. Cir. 2002). In the Ninth Ci rcuit, the availability of collateral estoppel is a mixed question of law a nd fact reviewed de novo . United States v. G eophysical Corp. of Alask a, 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 p roceeding; (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 earlie r 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 fa ir 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. o f Ill

. Found. , 402 U.S. 313, 329

- 334 (1971)).

On appeal, Tse first challenges the merits of the in v alidity determination in the Google litigation. That cha llenge fails, however, because the relevant inquiry here is whether the district court properly applied collateral estoppel, not whether the judgment of invalidity is co r-TSE v. APPLE INC

. 5

rect. Pharmacia & Upjohn , 1 70 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 vali dity 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 f

ull 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 matt er and issues in suit”). This cha llenge 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 grasp ed the technical subject matter and provided a well

- re asoned 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

cour t’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.TSE v. APPLE INC

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C ONCLUSION For the reasons stated above, we affirm the district court’s dismissal of the action due to collateral estoppel.

AFFIRMED