Within the decision:
Similarly, in In re Swartz, 232 F.3d 862, 864 (Fed.
Cir. 2000) (“Swartz I”), this court held that the claims of
Swartz’s U.S. Patent Application No. 07/760,970 were
unpatentable for failure of utility and enablement. The
at-issue ’765 application is a continuation of the ’970
application, and the representative claims in the two are
The core requirements for collateral estoppel are that:
the issue in question is identical to an issue previously
decided, the issue was actually litigated in the prior
proceeding, the resolution of the issue was necessary to
the prior judgment, and the party challenging the issue
must have been given a full and fair opportunity to litigate
the issue in the prior proceeding. Jet, Inc. v. Sewage
Aeration Sys., 223 F.3d 1360, 1366 (Fed. Cir. 2000).
Swartz argues that the district court wrongly applied
estoppel here because he submitted new references not
present in the previous appeals to show utility, and
because the applications here no longer include explicit
references to cold fusion.
Neither the new references nor the elimination of explicit
reference to cold fusion avoids the application of
collateral estoppel. Swartz has not shown that these
differences “materially alter the question of invalidity.”
See Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333,
1342 (Fed. Cir. 2013). Substantially identical claims were
previously found to be invalid as lacking utility and not
enabled. That holding is binding on Swartz.
As discussed above, applications that suggest inherently
unbelievable inventions satisfy the Board’s initial burden
to show lack of utility, and we have previously held that
Dr. Swartz’s LENR-related inventions here properly fall
within that realm.
The decision was per curiam, Before PROST, Chief Judge, NEWMAN and LINN, Circuit