N OTE : This disposition is nonprecedential. 

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

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IN RE: LAKSHMI ARUN ACHALAM, Appellant

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2016

- 1607

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 90/010,417.

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Decided: October 3, 2017

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L AKSHMI A RUNACHALAM , Menlo Park, CA, pro se.

N ATHAN K. K ELLEY , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Joseph Matal. Also represented by K AKOLI C APRIHAN , S ARAH E. C RAVEN , T HOMAS W. K RAUSE

.

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Before N EWMAN , C LEVENGER , and C HEN , Circuit Judges.

P ER C URIAM

. Lakshmi Arunachalam , proceeding pro se, owns U.S. Patent No. 6,212,556 (’556 Patent), which is a continu ation- in

- part of another patent that she owns, U.S. Patent No. 5,987,500 (’500 Patent). An ex parte reexamination ofIN RE : ARUNACHALAM 2

the ’556 Patent resulted in the Patent Trial and Appeal Board (Board) concludin g that certain claims of the patent

were unpatentable as either anticipated or obvious

. Dr. Arunachalam appeals the Board’s decision . H owever, the

ʼ 556 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. Ar unachalam’s in which we applied collateral estoppel to bar her from challenging a prior Board unpatentability dec ision. As with her appeal from that prior Board decision, we conclude that collateral estoppel bars Dr. Arunach alam from challenging the Board’s deci sion in this case

. Moreover, after carefully considering her briefs, we fu rther conclude that Dr. Arunachalam failed to show r eversible error in the Board’s unpatentability deci sion . In view of the for e going , we affirm the Board’s decision.

I NTRODUCTION
A. Technology

The ’ 556 Patent and the ’500 Patent are generally d irected to systems and methods that allow a user to e ngage in real

- time , two

- way transactions over networks

, such as the Internet. See, e.g.

, ’556 Patent at [57] (Abstract) ; ’500 Pa tent 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 Pa tent col. 2 ll. 32

– 42

. For example, the VAN switch allows a user to purchase goods and services f rom 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 manag ement 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 l l. 42

– 46 , but little else is said as to how the VAN switch specifically goes about handling such
t ransactions

. 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, i ncluding performing object routing.IN RE : ARUNACHALAM 4

ʼ 556 Patent col. 30 ll. 59

– 67 (emphases added)

. 1. A con fi gurable value

- added net w ork s witch for enabling real

- time transactions on a net work , said configurable value

- added net w ork switch co mpromising: means for s w itching to a transactional application in respons e to a user specification from a net work application , said transactional application provi ding a user w ith a plurality of transactional se rvices man aged by at least one value

- added
net w ork service pro vider, said value

- adde d ne tw ork service provider keep ing a transaction flow captive, said plurality of transaction al services b eing performed interactively and in real time; means for transmitting a transaction request from said transactional application; and
means for processing said transaction request.

ʼ 550 Patent col. 9 ll. 44

– 57 (emphases added).

B. Litigation History of the ’500 Patent
Dr. Arunachalam, through her company, Pi

- Net I nternational, Inc. (Pi -Net)

, previously asserted claims 1– 6, 10

– 12, 14

– 16, and 35 (asserted claims) of the ʼ 500 Patent in t he United States District Court for the District of Del aware (district court), but the district court eventually decla red the asserted claims invalid

. See generally Pi

- Net Int’l Inc. v. JPMorgan Chase & Co. , 42 F. Supp. 3d 5 79, 588

– 94 (D. Del. 2014) ( deeming claims invalid as indefinite, for lack of enablement, and fo r lack of written d escription). 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 t hat the asserted claims were not enabled. See id. at 592 (“[T] he specification does not actually define, in languageIN 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 accomplish es ‘object routing’ or real

- time transa ctions. Instead, the specification presents an abstract concept of real

- time transactions, in which a merchant and a user interact.” (citatio n omitted)). And the district court found that the asserted claims did not have sufficient written description. See id. at 594 (“ The crux of the invention i s ‘real

- time’ transactions for the user; there is no disclosure of how these occur. The [district ] court concludes that the [asserted c laims 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 Americ a, Inc. (SAP) challenged the patentability of claims 1– 6, 10

– 12, 14

– 17, and 35 (challenged claims) of the ʼ 500 Patent through an inter partes review (IPR)

. See id. at 4. The Board concluded that these c hallenged c laims were unpatentable. Id. Dr. Arunachalam appealed the Board’s conclusion s

. Id. SAP argued that Dr. Arunachalam was collaterally estopped from appealing the Board’s decision concerning the challenged claims of the ʼ 500 Patent because the district court had already declared them inval id. See id. SAP extended t his 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 e xplained that :IN RE : ARUNACHALAM 6

“W here 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 p atent,’ the patentee is collaterally estopped from r elitigating the validity of the

pa tent. ” . . . [C] ollateral estoppel is not limited “to patent claims that are identical. Rather, it is the identity of the issues that were litigated that d etermines whether collateral estoppel should a pply.”

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 colla terally estopped from appealing the Board’s decision with respect to the claims of the ʼ 500 Patent that were asserted in the district court and challenged in the IPR because the se claims had already been declared invalid in the district court litigation. See id. at 5. We also concluded that she was collateral ly 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 mater ially different than the claims of the ʼ 500 Patent asserted in the district court

. S ee id. at 7 (“‘[T] he differ ences b etween the unadjudicated patent claims and adjudicated patent claims do not materially a lter 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 V AN switch limitation, which the district
court previously held was not enabled in the other asser ted claims of the ʼ 500 Patent

. S ee id. It was of no import that the claims of the ʼ 500 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 observe d that D r. Arunachalam was represented at all times by counsel during the district court litigation involv ing the ʼ 500 Patent

, and thus, she already had a full and fair oppo rtunity to defend its patenta bility

. See id. at 5

– 6. We, therefore, declined to disturb the Board’s decision co ncerning the challenged claims of the ʼ 500 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. W e have jurisdiction p ursuant to 28 U.S.C. § 1295(a)( 4) (A) (2012).

D ISCUSSION

T he Patent and Tr ademark Office (PTO) contend s 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 inval idated certain claims of the ʼ 500 Patent

. See Appellee Br. at 17

– 23. Specifically, every challenged claim of the ʼ 556 Patent “ recites a limitation [from the ʼ 500 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 theIN RE : ARUNACHALAM 8

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 o pportunity to litigate the validity of a patent in one pr oceeding , but is ultimately unsuccessful, the patentee is collaterally estopped from reliti gating the validity or patentability of the paten t in a later proceeding

. See Miss. Chem. , 717 F.2d at 1376

. And notwithstanding any differences between the patent claims in the two procee dings, c ollateral estoppel is still applicable because the focus is on “the identity of issues ” that ha s 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 . O ur comparison of the challenged claims of the ʼ 5 56 Patent that were deemed unpatentable by the Board with the asserted claims of the ʼ 50 0 Patent that were declared invalid by the district court reveal s that any differences between the two sets of claims are not material such that th ose diffe rences would affect th e patentability of the challenged claims of the ʼ 556 Patent

. Compare, e.g.

, ʼ 556 Patent col. 30 ll. 57

– 59 (independent claim 1), id. col. 31 l l. 39

– 58 (independent claim 13), and id. col. 32 ll. 44

– 67 (ind ependent claim 26)

, with ʼ 50 0 Patent col. 9 ll. 44

– 57 (ind ependent claim 1), and id. col. 10 ll. 34

– 48 (independent claim 10). E very challenged claim of the ʼ 556 Patent contains the term s “switch,” “switching,” or a “means for switching” in the context of enabling two

- way, real

- time transactions

— all te rms that hav e been the bas e s for declaring other claims invalid as indefinite, for lack of enablement, and for lack of written description in JPMorgan

. See 42 F. Supp. 3d at 588

– 94

. Moreover, despite that the ʼ 556 Patent is a continu ation- in

- part of the ʼ 500 Patent with additional disclosures

, the ʼ 556 Patent’s discussion concerning these specific
terms remains nearly identical to its counterpart in theIN RE : ARUNACHALAM 9

ʼ 500 Patent

. Compare, e.g.

, ʼ 556 Patent col. 1 l. 20

– col. 10 l. 12, with ʼ 50 0 Patent col. 1 l. 11

– col. 9 l. 31. The ʼ 556 Patent ’s additional disclosures do not further explain what a “VAN switch” is or how it enable s two

- way, real

time transactions. See ʼ 556 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 “me ans for switching ,” we see no reason to allow her to appeal the patentability of the challenged claims of the ʼ 556 Patent , which also contain the same critical
terms. 1
Furthermore, Dr. Arun achalam has failed to show the Board committed a reversible error in its decision to affirm the Examiner’s anticipation and obviousness rejectio ns over Ginter . Dr. Arunachalam’s briefs list a number of c laim constructions and conclusory statements

, but they do not adequately explain how these constru ctions overcome the Examiner’s findings of anticipation and obviousness. Accordingly, Dr. Arunachalam’s arg uments 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 doe s 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 esto ppel].” (citations omitted) ).IN RE : ARUNACHALAM 10

All of Dr. Arunachalam’s remaining arguments for r eversing the Board’s decision are unavailing. 2

C ONCLUSION For the foregoing reasons, we affirm the Board’s dec ision.

AFFIRMED

C OSTS
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 iden tified 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 objecti onable generality. ” (citations omitted)).