  United States Court of Appeals
      for the Federal Circuit
                ______________________

     PHIL-INSUL CORP., DBA INTEGRASPEC,
               Plaintiff-Appellant

                           v.

    AIRLITE PLASTICS CO., FORMTECH, LLC,
              Defendants-Appellees
             ______________________

                      2016-1982
                ______________________

    Appeal from the United States District Court for the
District of Nebraska in No. 8:12-cv-00151-JFB-TDT, Chief
Judge Joseph F. Bataillon.
                 ______________________

                Decided: April 17, 2017
                ______________________

  PAUL ADAMS, The Adams Law Firm, Albuquerque,
NM, argued for plaintiff-appellant.

    LOUIS DISANTO, Banner & Witcoff, Ltd., Chicago, IL,
argued for defendants-appellees. Also represented by JON
O. NELSON.
                 ______________________

Before O’MALLEY, BRYSON, and WALLACH, Circuit Judges.
O’MALLEY, Circuit Judge.
2                   PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



     Phil-Insul Corp. d/b/a IntegraSpec (“IntegraSpec”)
filed suit against Airlite Plastics Co. and Formtech, LLC
(collectively, “Airlite”) alleging infringement of U.S.
Patent No. 5,428,933 (“the ’933 Patent”), which relates to
insulating concrete forms (“ICFs”) that are used in the
construction of buildings. Airlite moved for summary
judgment of noninfringement, arguing that IntegraSpec’s
claims are precluded by our decision in a prior action. In
that case, IntegraSpec asserted claims from the same
patent against different defendants with similar products.
There, after construing the claims, the district court
granted summary judgment of noninfringement, and
subsequently granted the parties’ stipulated request for a
Rule 54(b) certification for immediate appeal. Inte-
graSpec timely appealed, challenging only the district
court’s claim construction. We summarily affirmed the
district court’s final judgment without an opinion. Phil-
Insul Corp. v. Reward Wall Sys., Inc., 580 F. App’x 907
(Fed. Cir. 2014).
    In this case, Airlite argued that IntegraSpec’s in-
fringement claims are the same as the infringement
claims it asserted and lost in Reward Wall and that
Airlite’s accused products have the same design as the
products found noninfringing in that prior litigation. The
district court agreed, and granted Airlite’s motion for
summary judgment of noninfringement. Phil-Insul Corp.
v. Airlite Plastics, Co., No. 8:12-cv-151, 2016 WL 5107131
(D. Neb. Mar. 2, 2016) (“Decision on Appeal”). Because we
agree that IntegraSpec’s claims are barred by collateral
estoppel, we affirm.
                     I. BACKGROUND
                   A. The ’933 Patent
    IntegraSpec is the assignee of record for the ’933 Pa-
tent, which originally issued on July 4, 1995. The ’933
Patent underwent two ex parte reexaminations before the
United States Patent & Trademark Office (“PTO”): one
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.               3



that concluded on September 21, 2010, and another that
concluded on July 14, 2014.
    The ’933 Patent is directed to ICFs, which are ex-
panded polystyrene foam blocks used as molds to cast
concrete walls. The ICFs are stacked to form a hollow
wall which is then filled with concrete. The ICFs remain
in place after the concrete sets to serve as insulation for
the building. The ICFs consist of two parallel foam panels
that form sidewalls. The top and bottom edges of the
sidewalls have interconnecting means used to connect one
ICF to another when they are stacked.
     Figure 1, shown below, illustrates a preferred embod-
iment of an ICF having interconnecting means (16) that
include two rows of projections (18) and recesses (20) on
the top and the bottom edges of each panel/sidewall (10 &
12):




    The specification explains that, unlike prior art ICFs,
which had to be arranged in a specific way for intercon-
nection, the claimed ICFs are designed to permit inter-
connection “with like blocks or panels in a bi-directional
and/or reversible manner.” ’933 Patent, col. 1, ll. 8-13.
4                    PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



Because the claimed ICFs can be stacked in a number of
ways, they are “easier to interconnect” and installation
can proceed at a faster pace and with less waste because
the bidirectional and reversible design avoids orientation
restrictions. Id. at col. 1, ll. 38-48.
    As originally issued, claim 1 was directed to ICFs
where the interconnecting means on the top and bottom
edges of each panel “comprise[d] at least two rows of
alternating projections and recesses . . . wherein said
recess of one row is adjacent said projection of the other
row.” ’933 Patent, col. 6, ll. 11-15. Claim 2, as originally
issued, claimed “[a]n insulating construction member
according to claim 1, wherein said member is an insulat-
ing construction block.” Id. at col. 6, ll. 23-25.
   After the first reexamination, Claim 1 provided as fol-
lows:
    In a bi-directional and reversible insulating con-
    struction member having substantially planar
    ends and top and bottom edges and interconnect-
    ing means on said top and on said bottom edges,
    the improvement wherein each said top intercon-
    necting means and each said bottom interconnect-
    ing means has a pattern, each pattern comprising
    at least two longitudinally extending rows of al-
    ternating, continuous, immediately adjacent pro-
    jections and recesses, extending continuously
    along the entire length of said top and bottom
    edges, the end projection in one row flush with at
    least a portion of one of said end planes, within
    each said pattern each of said projections and re-
    cesses in each one of said at least two rows within
    said pattern being of substantially the same di-
    mension, wherein within each said pattern said
    recess of one row is adjacent said projection of the
    other row, and wherein said interconnecting
    means patterns on said top and bottom edges are
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.                 5



    the same and are offset arranged such that said
    recess of one row in said pattern on said top edge
    is opposed to said projection of an opposite row in
    said pattern on said bottom edge; whereby said
    insulating construction member can be intercon-
    nected with a like member in a bi-directional and
    reversible manner.
Ex Parte Reexamination Certificate for U.S. Patent No.
5,428,933 issued Sept. 21, 2010 (“First Reexam Cert.”) at
col. 1, ll. 26-47 (emphases added).
    Claim 2 was amended as follows:
    An insulating construction member according to
    claim 1, wherein said member is an insulating
    construction block comprising two panels, each of
    said panels having a pattern on the top and bot-
    tom edges, each of said patterns on each of said
    panels comprising at least one longitudinally ex-
    tending row of alternating, continuous, immedi-
    ately adjacent projections and recesses and each
    of said projections and each of said recesses within
    each said pattern in said at least one row being of
    substantially the same dimension.
Id. at col. 1, ll. 49-57 (emphasis added).
    Independent Claim 19 was added in the first ex parte
reexamination. Claim 19 contains the same “adjacent”
requirement present in Claim 1.
    The PTO issued a second ex parte reexamination
certificate in 2014. As a result of that reexamination,
claims 1, 3, 6-10, and 24 were cancelled. Ex Parte Reex-
amination Certificate for U.S. Patent No. 5,428,933 issued
Jul. 14, 2014 (“Second Reexam Cert.”) at col. 1. The
patentability of claims 2, 4, 5, 11, 13-16, 19-23, and 25-27
was confirmed, however. Id.
6                    PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



             B. The Reward Wall Litigation
    In February 2011, IntegraSpec filed suit against mul-
tiple defendants—including Reward Wall Systems, Inc.
(“Reward Wall”) and Nudura Corporation (“Nudura”)—
alleging infringement of the ’933 Patent. The parties filed
a joint motion for early claim construction, indicating that
two independent claims were at issue—Claim 1 and
Claim 19. The parties requested that the district court
construe three claim terms found in both claims, two of
which are relevant to this appeal: “adjacent” and “sub-
stantially the same dimension.” Joint Motion for Early
Claim Construction at 2, Phil-Insul Corp. v. Reward Wall
Sys., Inc., No. 8:12-cv-91 (D. Neb. Nov. 22, 2011), ECF No.
79. The parties agreed that these limitations should be
construed the same way in both claims. Id.
    The district court conducted a Markman hearing in
June 2012, and issued its claim construction order soon
thereafter. In relevant part, the court construed the term
“adjacent” to mean “next to . . . on the same panel or
sidewall.” Phil-Insul Corp. v. Reward Wall Sys., Inc., No.
8:12-cv-91, 2012 WL 2958233, at *7 (D. Neb. July 19,
2012). Looking at the prosecution history, the court found
that the patentee added the limitation “at least two rows”
in Claim 1 to distinguish it from prior art that disclosed
an ICF block with one row of alternating projections and
recesses on each sidewall. Id. at *9. The court recognized
that, although Claim 2 “discloses a construction block on
which each panel may have only one row of projections
and recesses,” it would be inconsistent with the specifica-
tion and the prosecution history to construe “adjacent” in
Claim 1 to encompass an ICF block having only one row.
Id. at *9, n.13. The district court construed “substantially
the same dimension” to mean “the same measurable
length, breadth, area and volume, with only minor varia-
tions in dimension of up to about 10%.” Id. at *11.
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.                 7



    Following the district court’s claim construction, the
defendants in Reward Wall separately moved for sum-
mary judgment of noninfringement. The district court
issued two decisions finding that the accused products did
not infringe the claims of the ’933 Patent, either literally
or under the doctrine of equivalents.
    In the first, the district court addressed whether the
accused ICFs contained the “adjacent” limitation. Phil-
Insul Corp. v. Reward Wall Sys., Inc., No. 8:12-cv-91, 2012
WL 5906546, *4 (D. Neb. Nov. 26, 2012). With respect to
the Nudura ICFs, IntegraSpec did not argue that the
products literally infringed, but instead asserted in-
fringement under the doctrine of equivalents. Id. at *5
(“IntegraSpec does not contend that the accused Nudura
ICFs or the accused Reward Wall ICFs literally infringe
the ’933 Patent.”). Looking to the prosecution history, the
court found that there was a narrowing amendment that
limited the scope of the patent such that an ICF with less
than two rows of alternating projections and recesses on a
given panel or sidewall cannot infringe. Id. at *6-7.
Given this amendment, the court concluded that “prosecu-
tion history precludes an ICF with one row of projections
and recesses on a panel or sidewall . . . from infringing the
’933 Patent under the doctrine of equivalents.” Id. at *8.
Because it was undisputed that the Nudura ICFs had
only one row of alternating projections and recesses on a
given panel, the court found that the Nudura ICFs did not
infringe the asserted claims—which included Claim 2—as
a matter of law. Id.
     In the second decision, the district court addressed
whether the accused ICFs contained the “substantially
the same dimension” limitation. IntegraSpec conceded
that, given the court’s construction of this limitation, it
could not argue that the accused Reward Wall ICFs
literally infringed the ’933 Patent. Phil-Insul Corp. v.
Reward Wall Sys., Inc., No. 8:12-cv-91, 2013 WL 4774726,
*5 (D. Neb. Sept. 5, 2013). Indeed, it was undisputed that
8                    PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



the Reward Wall iForm ICFs included “projections and/or
recesses that differ in dimension by at least twice the 10%
threshold specified in the court’s construction of the
limitation ‘substantially the same dimension.’” Id. at *14.
As such, the only issue was whether the Reward Wall
ICFs infringed under the doctrine of equivalents. Looking
to the prosecution history, the court found that, “to gain
issuance of the ’933 Patent, [IntegraSpec] limited its
claims to ICFs with projections and recesses having ‘the
same measurable length, breadth, area, and volume.’” Id.
at *12. Given this concession, the court found that “Inte-
graSpec is estopped from asserting that ICFs with a row
of projections and recesses that do not each have the same
measurable length, breadth, area, and volume contain
equivalents of the ‘substantially the same dimension’
limitation.” Id. The court concluded, therefore, that the
Reward Wall iForm ICFs did not infringe as a matter of
law.
    Given the district court’s decisions entering summary
judgment of noninfringement, the parties stipulated to
jointly request certification for immediate appeal under
Rule 54(b) of the Federal Rules of Civil Procedure. The
court granted the parties’ request and entered final
judgment in favor of the defendants.
    IntegraSpec appealed the district court’s final judg-
ment to this court, challenging only the court’s construc-
tion of the terms “adjacent” and “dimension.” Decision on
Appeal, 2016 WL 5107131, at *5 (“On appeal, IntegraSpec
challenged only the court’s claim construction, specifical-
ly, the construction of the terms ‘adjacent’ and ‘dimen-
sion.’”). IntegraSpec did not challenge any of the issues
determined in the district court’s noninfringement deci-
sions. Id.
    After briefing on appeal, but before oral argument,
the PTO issued the second ex parte reexamination certifi-
cate, confirming the patentability of Claims 2, 4, 5, 11, 13-
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.                9



16, 19-23, and 25-27. Id. IntegraSpec filed an unopposed
motion requesting that this court take judicial notice of
the results of the reexamination proceedings. We granted
that motion on September 22, 2014. Order, Phil-Insul
Corp. v. Reward Wall Sys., Inc., No. 14-1078 (Fed. Cir.
Sept. 22, 2014), ECF No. 65. The court heard oral argu-
ment on October 7, 2014, and summarily affirmed the
district court’s judgment pursuant to Federal Circuit Rule
36. Phil-Insul Corp. v. Reward Wall Sys., Inc., 580 F.
App’x 907 (Fed. Cir. 2014).
                    C. Procedural History
    IntegraSpec filed its complaint against Airlite in May
2012, while the Reward Wall action was pending. Specifi-
cally, IntegraSpec accused two separate lines of Airlite
products of infringement: the Fox Block ICFs and the Fox
Block 1440 ICFs. IntegraSpec alleged that the Fox Block
ICFs infringed Claims 2 and 5 of the ’933 Patent. Deci-
sion on Appeal, 2016 WL 5107131, at *1 n.3. It was
undisputed that, like the Nudura ICFs found to be nonin-
fringing in Reward Wall—the Fox Block ICFs have only
one row of alternating projections and recesses on the top
and bottom edges of each sidewall. Id.
    IntegraSpec also alleged that the Fox Block 1440 ICFs
infringed Claims 2, 4, 5, 19, and 27 of the ’933 Patent. Id.
IntegraSpec did not dispute that—like the Reward Wall
iForm ICFs found noninfringing in Reward Wall—the Fox
Blocks 1440 ICFs include projections that do not have the
same measurable length, breadth, area, and volume, and
that the differences are greater than 10%. Id.
     Given the overlap of issues, Airlite filed a motion to
stay this case pending the outcome of the second ex parte
reexamination and the resolution of the Reward Wall
litigation. The district court granted that motion in part,
and stayed proceedings pending the outcome of the reex-
amination. Order, Phil-Insul Corp. v. Airlite Plastics,
Inc., No. 8:12-cv-151 (D. Neb. Oct. 18, 2012), ECF No. 35.
10                   PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



The parties thereafter agreed that the case should remain
stayed pending resolution of the Reward Wall appeal.
    After this court issued its decision in Reward Wall,
the district court lifted the stay, and IntegraSpec moved
for claim construction. Specifically, IntegraSpec asked
the court to construe “adjacent” and “substantially the
same dimension.” Airlite opposed that motion on collat-
eral estoppel grounds, but nonetheless responded to
IntegraSpec’s proposed constructions.
     Airlite subsequently moved for summary judgment of
noninfringement based on collateral estoppel. Therein,
Airlite argued that IntegraSpec’s infringement claims
against Airlite’s accused products are indistinguishable
from the claims asserted against the defendants in Re-
ward Wall. Airlite also argued that there are no material
differences between the products found noninfringing in
Reward Wall and its accused products.         According to
Airlite, because this court affirmed the claim construction
of the “adjacent” and “dimension” limitations, those
constructions are binding on IntegraSpec for collateral
estoppel purposes.
    In response, IntegraSpec argued that: (1) it did not
have a full and fair opportunity to litigate the issues in
Reward Wall because it now alleges infringement of
Claim 2, rather than Claim 1; (2) the district court’s claim
construction in Reward Wall was incorrect; and (3) “the
defense of collateral estoppel is not available in this case
because the claim construction was not essential to the
court’s noninfringement rulings.” Decision on Appeal,
2016 WL 5107131, at *6. According to IntegraSpec, the
district court’s claim construction in Reward Wall created
an “irreconcilable conflict between Claims 1 and 2.” Id. at
*7.
    On March 2, 2016, the district court granted Airlite’s
motion for summary judgment based on collateral estop-
pel. First, the court explained that the patent claims at
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.               11



issue contain the same “adjacent” and “dimension” terms
that were construed in Reward Wall. Id. at *9. “The
construction of those terms was dispositive of the issue of
non-infringement in that case.” Id. Although Inte-
graSpec alleges that Airlite infringes Claim 2, rather than
Claim 1, and argues that Claim 2 was not considered in
Reward Wall, it conceded to the district court that Claim
2 contains all of the limitations of the now-cancelled
Claim 1. Id.
    Next, the court found that all of the elements for col-
lateral estoppel were satisfied for both the claim construc-
tion and noninfringement issues presented. Specifically,
the court found that IntegraSpec had a “full and fair
opportunity to litigate” the claim constructions in Reward
Wall and that the court’s construction of those terms
resulted in a finding of noninfringement. Id. The court
further found that: (1) the infringement issues in this case
are “essentially indistinguishable” from those in Reward
Wall; and (2) the accused Airlite products have the same
design as the products found noninfringing in Reward
Wall. Id. at *9-10.
    IntegraSpec timely appealed the district court’s final
judgment to this court. We have jurisdiction under 28
U.S.C. § 1295(a)(1).
                   II. STANDARD OF REVIEW
     We review a grant of summary judgment under the
law of the regional circuit. Grober v. Mako Prods., Inc.,
686 F.3d 1335, 1344 (Fed. Cir. 2012). The Eighth Circuit
reviews a grant of summary judgment de novo. Wilson v.
Spain, 209 F.3d 713, 716 (8th Cir. 2000). Summary
judgment is appropriate if “the movant shows that there
is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.” Fed.
R. Civ. P. 56(a).
12                    PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



                      III. DISCUSSION
    Collateral estoppel “precludes a plaintiff from reliti-
gating identical issues by merely ‘switching adversaries’”
and prevents a plaintiff from “asserting a claim that the
plaintiff had previously litigated and lost against another
defendant.” Parklane Hosiery Co. v. Shore, 439 U.S. 322,
329 (1979) (citation omitted). Because the application of
general collateral estoppel principles is not within the
exclusive jurisdiction of this court, we apply the law of the
circuit in which the district court sits. Aspex Eyewear,
Inc. v. Zenni Optical Inc., 713 F.3d 1377, 1380 (Fed. Cir.
2013).
    In the Eighth Circuit, the application of collateral es-
toppel is a question of law reviewed de novo on appeal.
Robinette v. Jones, 476 F.3d 585, 588 (8th Cir. 2007).
Collateral estoppel requires five elements:
     (1) the party sought to be precluded in the second
     suit must have been a party, or in privity with a
     party, to the original lawsuit; (2) the issue sought
     to be precluded must be the same as the issue in-
     volved in the prior action; (3) the issue sought to
     be precluded must have been actually litigated in
     the prior action; (4) the issue sought to be pre-
     cluded must have been determined by a valid and
     final judgment; and (5) the determination in the
     prior action must have been essential to the prior
     judgment.
Id. at 589 (citation omitted).
    Federal Circuit precedent applies, however, to aspects
of the collateral estoppel analysis that are particular to
patent law. Aspex Eyewear, 713 F.3d at 1380 (“[F]or any
aspects that may have special or unique application to
patent cases, Federal Circuit precedent is applicable.”).
Under this court’s precedent, “an infringement claim in a
second suit is the ‘same claim’ as in an earlier infringe-
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.               13



ment suit if the accused products in the two suits are
‘essentially the same.’” Roche Palo Alto LLC v. Apotex,
Inc., 531 F.3d 1372, 1379 (Fed. Cir. 2008) (citation omit-
ted). “Accused products are ‘essentially the same’ where
the differences between them are merely colorable or
unrelated to the limitations in the claim of the patent.”
Id.
     Applying this framework, the district court found each
of the collateral estoppel criteria satisfied for the claim
construction and the noninfringement issues presented in
this case. With respect to claim construction, the court
found that: (1) IntegraSpec was a party in Reward Wall;
(2) the construction of the “adjacent” and “substantially
the same dimension” claim terms were issues in the prior
case; (3) construction of those terms was “actually litigat-
ed” in Reward Wall; (4) the claim constructions became
final when we affirmed them on appeal; and (5) the claim
constructions were essential to the noninfringement
judgments in Reward Wall. Decision on Appeal, 2016 WL
5107131, at *9.
    With respect to noninfringement, the court explained
that the infringement issues IntegraSpec litigated in
Reward Wall are “substantively the same” as those pre-
sented here. Id. Specifically, the court found that the
noninfringement issues regarding the accused products in
Reward Wall were fully and fairly litigated in that pro-
ceeding; those determinations were essential to the final
judgment of noninfringement; and the judgment of nonin-
fringement was final because it was not appealed. Id. In
addition, the district court found that Airlite’s accused
products do not infringe the ’933 Patent “for the same
reasons stated in connection with the accused Nudura
ICFs and Reward Wall [iForm] ICFs in Reward Wall.” Id.
at *10. In reaching this conclusion, the court noted that
the accused products in this case have the same design as
the products found not to infringe in Reward Wall. Id.
14                   PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



     IntegraSpec submits that two of the collateral estop-
pel requirements are at issue on appeal: whether there
was a valid and final judgment and whether the determi-
nation in the prior action was “essential” to the prior
judgment. Appellant’s Reply 5-6. In particular, Inte-
graSpec argues that the district court erred when it:
(1) gave collateral estoppel effect to a Rule 36 judgment;
(2) relied on the oral argument transcript from the Re-
ward Wall appeal; and (3) failed to construe Claim 2. We
address each argument in turn.
            A. Rule 36 and Collateral Estoppel
    IntegraSpec’s primary argument on appeal is that a
Rule 36 judgment can never serve as a basis for collateral
estoppel. We disagree.
     Federal Circuit Rule 36 provides that:
     The court may enter a judgment of affirmance
     without opinion, citing this rule, when it deter-
     mines that any of the following conditions exist
     and an opinion would have no precedential value:
     (a) the judgment, decision, or order of the trial
     court appealed from is based on findings that are
     not clearly erroneous;
     (b) the evidence supporting the jury’s verdict is
     sufficient;
     (c) the record supports summary judgment, di-
     rected verdict, or judgment on the pleadings;
     (d) the decision of an administrative agency war-
     rants affirmance under the standard of review in
     the statute authorizing the petition for review; or
     (e) a judgment or decision has been entered with-
     out an error of law.
Fed. Cir. R. 36. As we have explained on several occa-
sions, “[a]ppeals whose judgments are entered under Rule
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.               15



36 receive the full consideration of the court, and are no
less carefully decided than the cases in which we issue
full opinions. The Rule permits the court to dispense with
issuing an opinion that would have no precedential value,
when the circumstances of the Rule exist.” U.S. Surgical
Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed. Cir.
1997).
    A Rule 36 summary affirmance is a valid and final
judgment of this court. See Taylor v. McKeithen, 407 U.S.
191, 194 n.4 (1972) (“We, of course, agree that the courts
of appeals should have wide latitude in their decisions of
whether or how to write opinions. That is especially true
with respect to summary affirmances.”). We have ex-
plained that, because there is no opinion, “a Rule 36
judgment simply confirms that the trial court entered the
correct judgment.” Rates Tech., Inc. v. Mediatrix Telecom,
Inc., 688 F.3d 742, 750 (Fed. Cir. 2012). “It does not
endorse or reject any specific part of the trial court’s
reasoning.” Id. That said, we have also expressly recog-
nized that a Rule 36 disposition can be used “in support of
a claim of ‘claim preclusion, issue preclusion, judicial
estoppel, law of the case, and the like.’” Id. (quoting Fed.
Cir. R. 32.1(c)).
     The Supreme Court likewise has recognized that a
summary affirmance has binding precedential effect, but
it “extends no further than ‘the precise issues presented
and necessarily decided by those actions.’” Anderson v.
Celebrezze, 460 U.S. 780, 786 n.5 (1983) (“A summary
disposition affirms only the judgment of the court below,
and no more may be read into our action than was essen-
tial to sustain that judgment.”). As such, the Court has
said that summary affirmances only “prevent lower courts
from coming to opposite conclusions on the precise issues
presented and necessarily decided by those actions.”
Mandel v. Bradley, 432 U.S. 173, 176 (1977). Consistent
with this approach, our internal operating procedures
provide that “Rule 36 judgments shall not be employed as
16                  PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



binding precedent by this court, except in relation to a
claim of res judicata, collateral estoppel, or law of the
case[.]” Fed. Cir. Internal Operating Procedure No. 9 ¶ 8
(Nov. 14, 2008). Accordingly, it is clear that a Rule 36
affirmance is a binding judgment for collateral estoppel
purposes.
    IntegraSpec argues that our decision in TecSec, Inc. v.
International Business Machines Corp., 731 F.3d 1336
(Fed. Cir. 2013) created a new rule: that a Rule 36 sum-
mary affirmance cannot have preclusive effect. We disa-
gree. Indeed, a careful reading of that decision reveals
that it supports application of estoppel in this case.
    In TecSec, TecSec accused IBM and several other
defendants of infringement. The district court severed
TecSec’s claims against IBM and stayed proceedings
against the other defendants. Id. at 1340. IBM filed a
motion for summary judgment of noninfringement. The
district court granted IBM’s motion on two separate and
independent grounds. Specifically, the court found that:
(1) TecSec failed to present sufficient evidence of direct
and indirect infringement; and (2) TecSec failed to show
that IBM’s software met various claim limitations, as
construed. Id. at 1342. TecSec appealed the district
court’s judgment to this court, challenging both of the
court’s determinations. After oral argument, we affirmed
the district court’s judgment without opinion pursuant to
Rule 36. TecSec, Inc. v. IBM, 466 F. App’x 882 (Fed. Cir.
2012).
     On remand, proceedings against the other defendants
remained, and TecSec stipulated that it could not prove
infringement under the claim construction adopted in the
IBM proceedings. Based on that stipulation, the district
court entered judgment of noninfringement in favor of the
defendants. TecSec appealed that judgment to this court.
On appeal, the defendants argued that, under the man-
date rule and collateral estoppel, the Rule 36 affirmance
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.               17



in the IBM appeal precluded TecSec from reasserting its
claim construction arguments. 1        TecSec, 731 F.3d at
1341. TecSec responded that collateral estoppel did not
apply because the district court’s claim constructions were
not “necessary to the final judgment, which rested on
multiple, independent grounds.” Id. at 1343. Because
this court could have affirmed on either ground, TecSec
argued that claim construction was not actually deter-
mined in the IBM appeal and was therefore not necessary
to the Rule 36 affirmance.
     We agreed with TecSec that collateral estoppel did not
apply. Although the district court stated that its claim
constructions were “strictly necessary” to resolving the
parties’ summary judgment motions, we found that the
court’s judgment based on TecSec’s failure of proof was
independent of the court’s construction. Id. at 1344.
Because claim construction was “neither actually deter-
mined by nor critical and necessary to our summary
affirmance in the IBM appeal,” we found that collateral
estoppel did not preclude TecSec’s challenge. Id.
     In TecSec, we reiterated that “Rule 36 judgments only
affirm the judgment of the lower tribunal. ‘[A] Rule 36
judgment simply confirms that the trial court entered the
correct judgment. It does not endorse or reject any specific
part of the trial court’s reasoning.’” Id. at 1343 (quoting
Rates Tech., 688 F.3d at 750). Citing this language,
IntegraSpec argues that a Rule 36 affirmance can never
give rise to collateral estoppel. But we expressly rejected
IntegraSpec’s proposed rule in TecSec. Specifically, we
made clear that “[h]ad claim construction been the only
issue in the IBM appeal, and had that claim construction
been essential to sustaining the judgment of noninfringe-


    1    Although the mandate rule was at issue in TecSec,
it is not at issue in this appeal, and is therefore not dis-
cussed herein.
18                   PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



ment, the preclusive effect of our Rule 36 judgment would
have been undeniable.” Id.
    Despite IntegraSpec’s arguments to the contrary,
TecSec did not create a categorical ban against asserting a
Rule 36 judgment for collateral estoppel purposes. In-
stead, it stands for the proposition that collateral estoppel
cannot apply where the appellate court affirmed, without
explanation, the judgment of a trial court that “deter-
mined two issues, either of which could independently
support the result,” because it is not known which issue
was “necessary” to the final appellate judgment. 2 Id. at



     2  We recognize that circuits are split on the related
but different question of whether alternative holdings
that are each independently sufficient to support a judg-
ment can be given preclusive effect. See Jean Alexander
Cosmetics, Inc. v. L’Oreal USA, Inc., 458 F.3d 244, 251-52
(3d Cir. 2006) (collecting cases and noting “no consensus
among the courts of appeals”). The Courts of Appeals for
the Second, Third, Ninth, and Eleventh Circuits generally
give preclusive effect to independent alternative holdings.
See Gelb v. Royal Globe Ins. Co., 798 F.2d 38, 45 (2d Cir.
1986) (“The general rule in this Circuit is that ‘if a court
decides a case on two grounds, each is a good estoppel.’”
(quoting Irving Nat’l Bank v. Law, 10 F.2d 721, 724 (2d
Cir. 1926))); Jean Alexander Cosmetics, 458 F.3d at 255
(“Thus, we will follow the traditional view that inde-
pendently sufficient alternative findings should be given
preclusive effect.”); In re Westgate-Cal. Corp., 642 F.2d
1174, 1176-77 (9th Cir. 1981) (following the “established
rule” that estoppel applies even where a court “rests its
judgment alternatively upon two or more grounds”);
Deweese v. Palm Beach, 688 F.2d 731, 734 (11th Cir.
1982) (“Normally, each alternative basis would form an
independent ground for collateral estoppel. . . . In this
case, however, the existence of alternative grounds makes
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.                 19



1343-44. TecSec is therefore consistent with the principle
that, for estoppel to apply, there must be no uncertainty
as to whether the precise issue was raised and deter-
mined in the prior suit. De Sollar v. Hanscome, 158 U.S.
216, 221 (1895) (“[I]t is of the essence of estoppel by
judgment that it is certain that the precise fact was
determined by the former judgment.”).
     Unlike the situation in TecSec, here it is clear that the
prior panel actually and necessarily adopted the district
court’s claim constructions when it affirmed the judg-
ments in Reward Wall. In the Reward Wall appeal,
IntegraSpec raised only two issues of claim construction:
(1) the “adjacent” limitation; and (2) the “substantially the
same dimension” limitation. Decision on Appeal, 2016



the application of offensive collateral estoppel problemat-
ic.”).
     The Fourth, Seventh, and Tenth Circuits have de-
clined to give independently sufficient alternative hold-
ings preclusive effect. See In re Microsoft Corp. Antitrust
Litig., 355 F.3d 322, 328 (4th Cir. 2004) (“if a judgment in
the prior case is supported by either of two findings,
neither finding can be found essential to the judgment”);
Peabody Coal Co. v. Spese, 117 F.3d 1001, 1008 (7th Cir.
1997) (en banc) (“Holdings in the alternative, either of
which would independently be sufficient to support a
result, are not conclusive in subsequent litigation with
respect to either issue standing alone.”); Turney v.
O’Toole, 898 F.2d 1470, 1472 n.1 (10th Cir. 1990) (noting
that, where a petition for writ gave two reasons for relief,
either of which would be sufficient, and the order granting
the writ did not explain its reasoning, the writ had no
preclusive effect). Because the Reward Wall proceedings
did not involve independent alternative holdings, either
below or on appeal, we need not address this split in
authority.
20                   PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



WL 5107131 at *5. The former construction supported
the district court’s November 26, 2012 noninfringement
judgment as to the accused Nudura ICFs, and the latter
supported the court’s September 5, 2013 noninfringement
judgment as to the accused Reward Wall iForm ICFs.
Neither of the claim constructions on appeal could have
independently supported both noninfringement judg-
ments. Therefore, our Rule 36 affirmance in Reward Wall
necessarily meant that we found no error in either of the
district court’s claim constructions.
    As the district court explained, the claim construc-
tions affirmed on appeal in Reward Wall were essential to
the noninfringement determinations therein. Id. at *9.
IntegraSpec did not raise on appeal issues adjudicated in
the district court’s noninfringement decisions. “An issue
that falls within the scope of the judgment appealed from
but is not raised by the appellant in its opening brief on
appeal is necessarily waived. Unless remanded by this
court, all issues within the scope of the appealed judg-
ment are deemed incorporated within the mandate and
thus are precluded from further adjudication.” Engel
Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed.
Cir. 1999) (citing United States v. Russ, 861 F.2d 184, 185
(8th Cir. 1988)). Accordingly, the noninfringement de-
terminations in Reward Wall are final for collateral
estoppel purposes by virtue of IntegraSpec’s failure to
appeal them.
    Although the district court in this case blended its
analysis of collateral estoppel as to the claim construction
and noninfringement issues, we find no error in the
court’s ultimate conclusion as to either issue. First, we
agree with the district court that the claim constructions
from Reward Wall are entitled to preclusive effect. The
court correctly concluded that IntegraSpec was a party in
Reward Wall, the “adjacent” and “substantially the same
dimension” claim terms were construed in Reward Wall,
construction of those terms was “actually litigated” in that
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.                 21



case, the claim constructions became final when we
affirmed them on appeal, and the claim constructions
were essential to the noninfringement judgments. Deci-
sion on Appeal, 2016 WL 5107131, at *9. Because the
record reveals that IntegraSpec had a full and fair oppor-
tunity to litigate the meaning of the terms “adjacent” and
“dimension”—the same terms at issue here—it is bound
by those constructions.
    The district court also found that IntegraSpec’s in-
fringement claims in this case are the same as the in-
fringement claims it litigated and lost in Reward Wall. In
reaching this conclusion, the district court found that
Airlite’s accused Fox Blocks ICFs have the same design of
only one row of projections and recesses on the top and
bottom edges of each sidewall as the Nudura ICFs that
were found not to infringe the “adjacent” limitation in
Reward Wall. Id. Likewise, the court concluded that the
accused Fox 1440 ICFs in this case have the same design
of projections that differ in volume by greater than 10% as
the Reward Wall ICFs that were adjudicated in Reward
Wall to not infringe the “substantially same dimension”
limitation of Claim 1. Id. at *10. IntegraSpec does not
challenge these determinations on appeal. Nor could it,
given that counsel for IntegraSpec conceded during argu-
ment to the district court that there was “no substantial
difference” between the Nudura ICFs found noninfringing
in Reward Wall and the Fox Blocks ICFs accused of
infringement here. Transcript of Proceedings at 75:5-
76:12, Phil-Insul Corp. v. Airlite Plastics, Co., No. 8:12-cv-
151 (D. Neb. July 31, 2015), ECF. No. 73.
    The district court noted that IntegraSpec did not pro-
pound “any argument or evidence on the substantive
issue of noninfringement.” Decision on Appeal, 2016 WL
5107131, at *10 n.13. On appeal, IntegraSpec concedes
that the determination of no literal infringement in
Reward Wall was based on the court’s claim construction,
but maintains that its claim for infringement under the
22                  PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



doctrine of equivalents was not. It is well established,
however, that an infringement analysis is a two-step
process. The court must: (1) determine the scope and
meaning of the patent claims asserted; and (2) compare
the properly construed claims to the allegedly infringing
device. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1454 (Fed. Cir. 1998) (en banc). IntegraSpec fails to
explain how the determinations of noninfringement under
the doctrine of equivalents in Reward Wall were allegedly
made without reference to claim construction. According-
ly, we find IntegraSpec’s arguments with respect to the
doctrine of equivalents unpersuasive.
    On this record, and given IntegraSpec’s concession
that the accused products in this case are substantially
the same as those at issue in Reward Wall, we find no
error in the district court’s conclusion that Airlite’s ac-
cused products do not infringe the ’933 Patent.
          B. The Reward Wall Appellate Record
    Next, IntegraSpec argues that the district court did
not understand the appellate record in Reward Wall and
misrepresented the oral argument transcript. According
to IntegraSpec, the district court here relied almost
entirely on what was said about claim construction at the
oral hearing, but failed to recognize that two judges on
the panel “doubted that the district court construction
made sense.” Appellant Br. at 22. We disagree.
    As noted, the district court correctly determined that
the only issues IntegraSpec raised on appeal in Reward
Wall were the construction of the “adjacent” and “sub-
stantially the same dimension” limitations. The court
cited IntegraSpec’s opening brief on appeal in Reward
Wall in support of this determination. Decision on Ap-
peal, 2016 WL 5107131, at *5. The court also noted that
the audio recording of the oral argument in Reward Wall
confirmed that IntegraSpec did not challenge the nonin-
fringement determinations in that appeal. Id. at *5 n.8.
PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.              23



The district court did not err in citing these sources to
confirm the scope of what was at issue in Reward Wall.
That the panel of judges in the Reward Wall appeal
appeared to challenge the appellee during oral argument
does not establish that they doubted the district court’s
claim construction. The fact remains that the panel
issued a Rule 36 affirmance. Accordingly, IntegraSpec’s
interpretation of the oral argument in Reward Wall is
irrelevant.
            C. Claim Construction of Claim 2
    IntegraSpec also argues that Claim 2 must be con-
strued in this case because it was not at issue in Reward
Wall. According to IntegraSpec, the district court in
Reward Wall only construed Claims 1 and 19, and its
construction of the term “adjacent” in Claim 1 created an
irreconcilable conflict with Claim 2.
    Airlite responds that IntegraSpec asserted infringe-
ment of Claim 2—not Claim 1—against the Nudura ICFs
in Reward Wall. Airlite also argues that the disputed
claim terms in this case—“adjacent” and “substantially
the same dimension”—were at issue in Reward Wall, and
the court considered and rejected IntegraSpec’s claim
construction arguments in that case.
    We agree with Airlite. In Reward Wall, the parties
jointly requested early claim construction of certain claim
terms found in both Claim 1 and Claim 19 of the ’933
Patent. Decision on Appeal, 2016 WL 5107131, at *3.
Because the parties selected the claims and the claim
terms to be construed, IntegraSpec’s suggestion that the
district court overlooked and failed to construe other
claims is without merit. As the district court explained,
the patent claims at issue here contain the same “adja-
cent” and “dimension” terms that the court construed in
Reward Wall. Id. at *9. Although Reward Wall involved
Claims 1 and 19, IntegraSpec conceded to the district
court in this case that Claim 2 contains all of the same
24                  PHIL-INSUL CORP.   v. AIRLITE PLASTICS CO.



limitations of Claim 1, which was cancelled during reex-
amination. Id. The court found that those claim terms
were dispositive of the issue of noninfringement in Re-
ward Wall.
    At oral argument, counsel for IntegraSpec argued
that, although the same terms appear in Claims 1 and 2,
those terms can be construed differently between the two
claims. Oral Argument at 10:52-11:00, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-1982.mp3 (“So you are saying that the exact same
language could be construed differently? In the context of
a different claim, yes.”). It is well-established, however,
that claim terms are to be construed consistently
throughout a patent. Rexnord Corp. v. Laitram Corp.,
274 F.3d 1336, 1342 (Fed. Cir. 2001) (“Furthermore, a
claim term should be construed consistently with its
appearance in other places in the same claim or in other
claims of the same patent.”).
    In any event, the district court considered and reject-
ed IntegraSpec’s claim construction arguments in Reward
Wall, and we affirmed the court’s constructions on appeal.
We decline IntegraSpec’s request to reconstrue those
terms now. IntegraSpec’s arguments were either made or
could have been made in Reward Wall, and they cannot
preclude the application of estoppel in this case.
                     IV. CONCLUSION
    For the foregoing reasons, we affirm the district
court’s judgment of noninfringement.
                      AFFIRMED
