NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: LAKSHMI ARUNACHALAM,

Appellant

______________________ 

2016-1607

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 90/010,417.

______________________ 

Decided: October 3, 2017

______________________ 

 LAKSHMI ARUNACHALAM, Menlo Park, CA, pro se.

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Joseph Matal. Also represented by KAKOLI 

CAPRIHAN, SARAH E. CRAVEN, THOMAS W. KRAUSE. 

______________________ 

Before NEWMAN, CLEVENGER, and CHEN, Circuit 

Judges.

PER CURIAM. 

Lakshmi Arunachalam, proceeding pro se, owns U.S. 

Patent No. 6,212,556 (’556 Patent), which is a continuation-in-part of another patent that she owns, U.S. Patent 

No. 5,987,500 (’500 Patent). An ex parte reexamination of 
2 IN RE: ARUNACHALAM

the ’556 Patent resulted in the Patent Trial and Appeal 

Board (Board) concluding that certain claims of the patent

were unpatentable as either anticipated or obvious. Dr.

Arunachalam appeals the Board’s decision. However, the

ʼ556 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. Arunachalam’s in which we applied collateral estoppel to bar 

her from challenging a prior Board unpatentability decision. As with her appeal from that prior Board decision, 

we conclude that collateral estoppel bars Dr. Arunachalam from challenging the Board’s decision in this case. 

Moreover, after carefully considering her briefs, we further conclude that Dr. Arunachalam failed to show reversible error in the Board’s unpatentability decision. In 

view of the foregoing, we affirm the Board’s decision. 

INTRODUCTION

A. Technology 

The ’556 Patent and the ’500 Patent are generally directed to systems and methods that allow a user to engage in real-time, two-way transactions over networks, 

such as the Internet. See, e.g., ’556 Patent at [57] (Abstract); ’500 Patent 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 Patent col. 2 ll. 32–42. 

For example, the VAN switch allows a user to purchase 

goods and services from 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 management 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 ll. 42–46, but little else is said as to how 

the VAN switch specifically goes about handling such 

transactions. 

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, including performing object routing.
4 IN RE: ARUNACHALAM

ʼ556 Patent col. 30 ll. 59–67 (emphases added). 

1. A configurable value-added network switch for 

enabling real-time transactions on a network, said 

configurable value-added network switch compromising:

means for switching to a transactional application 

in response to a user specification from a network 

application, said transactional application providing a user with a plurality of transactional services managed by at least one value-added 

network service provider, said value-added network service provider keeping a transaction flow

captive, said plurality of transactional services being performed interactively and in real time; 

means for transmitting a transaction request from 

said transactional application; and

means for processing said transaction request.

ʼ550 Patent col. 9 ll. 44–57 (emphases added).

B. Litigation History of the ’500 Patent

Dr. Arunachalam, through her company, Pi-Net International, Inc. (Pi-Net), previously asserted claims 1–6, 

10–12, 14–16, and 35 (asserted claims) of the ʼ500 Patent 

in the United States District Court for the District of 

Delaware (district court), but the district court eventually 

declared the asserted claims invalid. See generally Pi-Net 

Int’l Inc. v. JPMorgan Chase & Co., 42 F. Supp. 3d 579, 

588–94 (D. Del. 2014) (deeming claims invalid as indefinite, for lack of enablement, and for lack of written description). 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 that 

the asserted claims were not enabled. See id. at 592 

(“[T]he specification does not actually define, in language 
IN 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 accomplishes ‘object routing’ or real-time transactions. Instead, the specification presents an abstract 

concept of real-time transactions, in which a merchant 

and a user interact.” (citation 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 is ‘real-time’ transactions for the user; there is 

no disclosure of how these occur. The [district] court 

concludes that the [asserted claims 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 

America, Inc. (SAP) challenged the patentability of claims 

1–6, 10–12, 14–17, and 35 (challenged claims) of the ʼ500 

Patent through an inter partes review (IPR). See id. at 4. 

The Board concluded that these challenged claims were 

unpatentable. Id. Dr. Arunachalam appealed the Board’s 

conclusions. Id. SAP argued that Dr. Arunachalam was

collaterally estopped from appealing the Board’s decision 

concerning the challenged claims of the ʼ500 Patent

because the district court had already declared them 

invalid. See id. SAP extended this 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 explained that: 
6 IN RE: ARUNACHALAM

“Where 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 patent,’ the patentee is collaterally estopped from relitigating the validity of the 

patent.” . . . [C]ollateral estoppel is not limited “to 

patent claims that are identical. Rather, it is the 

identity of the issues that were litigated that determines whether collateral estoppel should apply.”

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 collaterally estopped from appealing the Board’s decision with 

respect to the claims of the ʼ500 Patent that were asserted 

in the district court and challenged in the IPR because 

these claims had already been declared invalid in the 

district court litigation. See id. at 5. We also concluded 

that she was collaterally 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 materially different than the claims of the ʼ500 Patent asserted 

in the district court. See id. at 7 (“‘[T]he differences between the unadjudicated patent claims and adjudicated 

patent claims do not materially alter 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 VAN switch limitation, which the district 

court previously held was not enabled in the other asserted claims of the ʼ500 Patent. See id. It was of no import

that the claims of the ʼ500 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 observed that Dr. 

Arunachalam was represented at all times by counsel 

during the district court litigation involving the ʼ500 

Patent, and thus, she already had a full and fair opportunity to defend its patentability. See id. at 5–6. We, 

therefore, declined to disturb the Board’s decision concerning the challenged claims of the ʼ500 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. We 

have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A)

(2012). 

DISCUSSION

The Patent and Trademark Office (PTO) contends 

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 invalidated certain claims of the ʼ500 Patent. See Appellee Br. 

at 17–23. Specifically, every challenged claim of the ʼ556 

Patent “recites a limitation [from the ʼ500 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 the 
8 IN RE: ARUNACHALAM

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 opportunity to litigate the validity of a patent in one proceeding, but is ultimately unsuccessful, the patentee is 

collaterally estopped from relitigating the validity or 

patentability of the patent in a later proceeding. See

Miss. Chem., 717 F.2d at 1376. And notwithstanding any 

differences between the patent claims in the two proceedings, collateral estoppel is still applicable because the 

focus is on “the identity of issues” that has 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. Our comparison of 

the challenged claims of the ʼ556 Patent that were 

deemed unpatentable by the Board with the asserted 

claims of the ʼ500 Patent that were declared invalid by 

the district court reveals that any differences between the 

two sets of claims are not material such that those differences would affect the patentability of the challenged 

claims of the ʼ556 Patent. Compare, e.g., ʼ556 Patent col. 

30 ll. 57–59 (independent claim 1), id. col. 31 ll. 39–58 

(independent claim 13), and id. col. 32 ll. 44–67 (independent claim 26), with ʼ500 Patent col. 9 ll. 44–57 (independent claim 1), and id. col. 10 ll. 34–48 (independent 

claim 10). Every challenged claim of the ʼ556 Patent

contains the terms “switch,” “switching,” or a “means for 

switching” in the context of enabling two-way, real-time 

transactions—all terms that have been the bases 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 ʼ556 Patent is a continuation-in-part of the ʼ500 Patent with additional disclosures, 

the ʼ556 Patent’s discussion concerning these specific 

terms remains nearly identical to its counterpart in the 
IN RE: ARUNACHALAM 9

ʼ500 Patent. Compare, e.g., ʼ556 Patent col. 1 l. 20–col. 10 

l. 12, with ʼ500 Patent col. 1 l. 11–col. 9 l. 31. The ʼ556 

Patent’s additional disclosures do not further explain

what a “VAN switch” is or how it enables two-way, realtime transactions. See ʼ556 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 “means for switching,” we see no reason to allow 

her to appeal the patentability of the challenged claims of 

the ʼ556 Patent, which also contain the same critical

terms.1 

Furthermore, Dr. Arunachalam has failed to show the 

Board committed a reversible error in its decision to 

affirm the Examiner’s anticipation and obviousness 

rejections over Ginter. Dr. Arunachalam’s briefs list a 

number of claim constructions and conclusory statements, 

but they do not adequately explain how these constructions overcome the Examiner’s findings of anticipation 

and obviousness. Accordingly, Dr. Arunachalam’s arguments 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 does 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 estoppel].” (citations omitted)). 
10 IN RE: ARUNACHALAM

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

CONCLUSION

For the foregoing reasons, we affirm the Board’s decision. 

AFFIRMED 

COSTS

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

identified 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 objectionable generality.” (citations 

omitted)).