Claim Preclusion

  • Claim Preclusion (“Res Judicata”): Judgment (Even If Consent) Bars Party’s Relitigation Of Same Claim / Defense Brought Or Could Have Been Brought, Even During Pendency Of Appeal: “Claim preclusion applies when ‘(1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first….’ What constitutes the same transaction of facts is ‘to be determined pragmatically,’ considering ‘whether the facts are related in time, space, origin, or motivation, whether they form a convenient trial unit, and whether their treatment as a unit conforms to the parties’ expectations or business understanding or usage.’ Restatement (Second) of Judgments, § 24 (Am. Law Inst. 1982).” Hyatt (Fed. Cir. 09/24/18) (rejecting USPTO’s claim preclusion defense; applying Fed. Cir. claim preclusion law to issue of delays in patent examination). Bars “the relitigation of a claim, or cause of action, or any possible defense to the cause of action which is ended by a judgment of the court;” “bars both claims that were brought as well as those that could have been brought,” including infringement claims on specific patent claims that were dismissed without prejudice with parties’ consent, before the judgment was entered. Applies even if consent judgment. Brain Life (Fed. Cir. 03/24/14) (applying 9th law); see Lucky Brand (U.S. 05/14/2020) (no claim preclusion as to release defense in trademark action because not same claim: “the two suits here were grounded on different conduct, involving different marks, occurring at different times. They thus did not share a ‘common nucleus of oper­ative facts.’”) But “claim preclusion does not bar a claim merely because it could have been raised in a prior action [on a different claim] between the parties that was resolved by a final judgment on the merits.” Acumed (Fed. Cir. 05/13/08). A “judgment’s preclusive effect is generally immediate, notwithstanding any appeal.” Coleman (U.S. 05/18/2015); SSIH (Fed. Cir. 07/15/83) (pendency of appeal has no effect on finality of a judgment of invalidity).
  • Claim Preclusion (And Issue Preclusion) Applies Only In A Separate, Second Proceeding: “For either issue or claim preclusion to apply, a second, separate case must exist.” DBN Holding (Fed. Cir. 11/27/18) (non-precedential) (reversing ITC judgment of “res judicata” because earlier Fed. Cir. ruling on which ITC relied was in same ITC proceeding); Innovad (Fed. Cir. 08/06/01) (aff’g Summ. J. non-infringement; failure to appeal claim construction against co-defendants in action does not constitute a second action for issue preclusion purposes).
  • Infringement Post-Judgment (Or Even Post-Complaint If Not Added To First Suit) May Or May Not Be Considered Same Claim: “The doctrine of claim preclusion does not apply as between the claims for the first and second damages periods. It is well-established that, as to claims for continuing conduct after the complaint is filed, each period constitutes a separate claim.” Dow Chem. II (Fed. Cir. 08/28/15) (on appeal from $30.9 Million supplemental damages award, holding invalid for indefiniteness, under intervening Nautilus decision, claims Fed. Cir. had held definite on earlier appeal in same case aff’g award of $61.7 Million for earlier time period). Being dismissed from action with prejudice does not preclude later being subject to injunction in same action prohibiting future infringements, “even if all the conduct is alleged to be unlawful for the same reason.” Asetek I (Fed. Cir. 12/06/16), modified on other grounds, Asetek II (Fed. Cir. 04/03/17). Compare Roche Palo Alto (Fed. Cir. 07/09/08) (infringement claim in a second suit is same claim in an earlier suit if the accused products are “essentially the same”; i.e., “where the differences between them are merely ‘colorable’ or ‘unrelated to the limitations in the claim of the patent.’”) and Sowinski (Fed. Cir. 08/21/20) (aff’g claim preclusion against alleging infringement by continuation of acts accused in first dismissed action: “when the act has been adjudged not wrongful, its repetition cannot be challenged in a subsequent suit”); with Aspex Eyewear (Fed. Cir. 03/14/12) (claim preclusion does not apply to particular products made and sold after the first suit (or during the first suit if not added to that suit), even if substantially similar to those in first action. It’s a new claim. In view of “the normal rule that the products at issue in a patent suit are those in existence at the time the suit is filed”: “While a party may seek to pursue claims that accrue during the pendency of a lawsuit adjudicated in that lawsuit, the party is not required to do so, and res judicata will not be applied to such accruing claims if the party elects not to have them included in the action.”) and Mentor Graphics (Fed. Cir. 03/16/17) (rev’g Summ. J. of claim preclusion where licensee terminated its license and was counterclaimed for post-termination infringements: “Exactly like Aspex Eyewear and Brain Life, Mentor’s infringement allegations are based on alleged acts of infringement that occurred after the Mentor/EVE license terminated and were not part of the previous lawsuit. Claim preclusion does not bar these allegations because Mentor could not have previously brought them.” Distinguishing precedents addressing whether “a defendant could re-raise validity challenges in a subsequent action.”) See Lucky Brand (U.S. 05/14/2020) (“Claim preclusion generally ‘does not bar claims that are predicated on events that postdate the filing of the initial complaint.’”).
  • Stipulated Dismissal With Prejudice Can Be Basis For Claim Preclusion: Can be basis for claim preclusion but not issue preclusion. Levi Strauss (Fed. Cir. 06/18/13) (a FRCP 41(a)(2) dismissal with prejudice by court order, without findings of fact); In re PersonalWeb (Fed. Cir. 06/17/20) (aff’g judgment of claim preclusion based on stipulated dismissal with prejudice that lacked any factual findings). Cf. Sowinski (Fed. Cir. 08/21/20) (dismissal for want of prosecution is adjudication on merits triggering claim preclusion).
  • Judgment Not Resolving Remedies Is Not Sufficiently Final For Claim Preclusion: Fed. Cir. mandate aff’g liability but remanding on remedy issues not sufficiently final to preclude application of intervening judgment cancelling claims per a Reexamination. Fresenius (Fed. Cir. 07/02/13) (2-1).
  • Party May Not Split Cause Of Action Based On Same Series Of Transactions Into Separate Lawsuits: “a party may not split a cause of action into separate grounds of recovery and raise the separate grounds in successive lawsuits; instead, a party must raise in a single lawsuit all the grounds of recovery arising from a single transaction or series of transactions that can be brought together.” Mars (Fed. Cir. 06/26/95) (same patent asserted in two successive actions); Senju Pharm (Fed. Cir. 03/31/14) (2-1) (second suit asserting reexamination patent barred by first suit asserting patent before reexamination, even though second suit filed before judgment of invalidity in first suit); In re PersonalWeb (Fed. Cir. 06/17/20) (aff’g that action against Amazon customers’ use of certain features of Amazon S3 storage barred under claim preclusion by earlier stipulated dismissal with prejudice (without fact findings) of separate action against Amazon asserting same patents targeting overlapping features of same S3 product); Ottah (Fed. Cir. 10/18/23) (non-precedential) (aff’g claim preclusion; claim preclusion cannot be avoided by making new arguments or theories of infringement). Cf. Arendi (Fed. Cir. 09/07/22) (aff’g dismissal of second action as duplicative where plaintiff filed second action on products it accused in first action but for which it failed to provide sufficient infringement contentions; “The duplicative-litigation doctrine prevents plaintiffs from ‘maintain[ing] two separate actions involving the same subject matter at the same time in the same court . . . against the same defendant.’”).
    • “Same Transaction” Standard Generally Determined Pragmatically, But Also Subject To Certain Presumptions: See generally Container Transport (Ct. Cl. 11/10/72) (“The modern trend with respect to the defense of former adjudication is to insist, first, that a plaintiff raise his entire ‘claim’ in one proceeding, and second, to define ‘claim’ to cover all the claimant’s rights against the particular defendant with respect to all or any part of the transaction, or series of connected transactions, out of which the action arose. In deciding what factual grouping constitutes a transaction, and what groupings make a series of connected transactions, the tribunal acts pragmatically, giving weight to such considerations as whether the facts are related in time, space, motivation or the like so as to form a convenient trial unit, and whether their treatment as a unit conforms to the parties’ expectations or business understanding or usage.”); U.S. v. Tohono (U.S. 04/26/2011) (“The now-accepted test in preclusion law for determining whether two suits involve the same claim or cause of action depends on factual overlap, barring ‘claims arising from the same transaction.’” [citing Restatement (Second) of Judgments § 24 (1980)]); Federated Dept. Stores (U.S. 06/15/1981) (“The Restatement notes that a common set of transactional facts is to be identified ‘pragmatically.’ Restatement (Second) of Judgments § 24. Seeking to bring additional clarity to this standard, courts have defined ‘transaction’ in terms of a ‘core of operative facts,’ the ‘same operative facts,’” or the ‘same nucleus of operative facts,’ and ‘based on the same, or nearly the same factual allegations.’”). But courts also have recognized presumptions on this issue, such as presumption that claims on a single contract generally must be brought together. Phillips/May (Fed. Cir. 04/23/08) (“The presumption that claims arising out of the same contract constitute the same claim for res judicata purposes may be overcome by showing that the claims are unrelated.”).
    • But Fed. Cir. Has Adopted An “Essentially Same Product” Rule: At least some panels have gone beyond a mere presumption and created a bright-line rule that two patent infringement actions are not the same claim (for claim preclusion purposes) unless they accuse essentially the same product of infringement. Young Engineers (Fed. Cir. 11/08/83) (while claim preclusion arising from dismissal with prejudice of infringement civil action can bar ITC proceeding based on alleged infringement of same patent, that is true only for same “specific devices” before the district court action as only those devices have the status of non-infringing, so that defendant does not obtain an “unfettered” license.); Foster (Fed. Cir. 09/27/91) (“An essential fact of a patent infringement claim is the structure of the device or devices in issue. …. It follows that for claim preclusion to apply here, the devices in the two suits must be essentially the same. …. Colorable changes in an infringing device or changes unrelated to the limitations in the claim of the patent would not present a new cause of action.”); Nystrom (Fed. Cir. 09/08/09) (products are “essentially the same” for claim preclusion purposes where differences do “not materially alter the infringement analysis;” here “simply adding a wood grain and changing the board’s color does not materially alter the infringement analysis of the ‘wood cut from a log’ limitation.” ); Acumed (Fed. Cir. 05/13/08) (“we disagree with the district court and Stryker that the essentially-the-same-test of Foster does not apply where a claim could have been litigated in a prior action.”) See Arcelormittal (Fed. Cir. 11/05/18) (vacating issue-preclusion finding in view of new evidence that product now has been commercialized and its treatment process meets the product-by-process claim limitation that was found lacking in earlier action based on an experimental treatment process; “the proponent of claim or issue preclusion bears the burden of showing that the accused devices are essentially the same as those in the prior litigation”).
    • Direct Infringement Cause Of Action Not Same As Later Indirect Infringement Cause Of Action On Same Accused Product If Could Not Plausibly Have Alleged Inducement In First Action: Inguran (Fed. Cir. 07/05/23) (rev’g judgment of claim preclusion against inducement cause of action, where first action asserted direct infringement, where facts needed to plausibly allege inducement, centered on actions of third parties, mostly came to light in later action).
  • TIPS:
  • Judgment On Some Original Patent Claims Bars Second Action (Against Essentially Same Products) On Reexamination Claims Under Claim Splitting Prohibition: Res judicata (claim preclusion) prohibits “claim splitting,” and thus prohibits second suit on claims added in reexamination which are substantially identical to claims in original patent already litigated. Unlike reissue claims, “claims that emerge from reexamination do not create a new cause of action that did not exist before.” Aspex Eyewear (Fed. Cir. 03/14/12); see Acumed (Fed. Cir. 05/13/08) (no claim-splitting preclusion because accused products not essentially the same). “Claims that emerge from reexamination do not in and of themselves create a new cause of action that did not exist before” because a reexamined patent is the original patent, not a new patent, just examined an additional time. Senju Pharm. (Fed. Cir. 03/31/14) (2-1) (cannot sue on same patent twice; suit asserting amended and new claims added in Rxn. (against same product) barred under claim preclusion by invalidity judgment on originally issued claims in first suit); but see Target Training (Fed. Cir. 04/22/16) (non-precedential) (dictum distinguishing Senju; dismissal of suit as being moot ivo all issued claims being cancelled in reexamination, is not a judgment on the merits triggering claim preclusion).
  •  Assertion Of Patents With Patently Indistinct Claims Against Same Products Are Same Cause Of Action: “Where different patents are asserted in a first and second suit, a judgment in the first suit will trigger claim preclusion only if the scope of the asserted patent claims in the two suits is essentially the same. In applying that standard to the particular context here, we conclude that claims which are patentably indistinct are essentially the same…. Assertion of each new continuation patent does not necessarily create a new cause of action.” Simpleair (Fed. Cir. 03/12/18) (vacating dismissal of complaint for claim preclusion and under Kessler doctrine, because filing of terminal disclaimer is not an admission that the claims are patentably indistinct, albeit is a strong clue); XY (Fed. Cir. 07/31/20) (vacating claim-preclusion judgment for failure to compare scope of respective claims, despite continuation patents being asserted against same products); Indivior I (Fed. Cir. 11/20/18) (2-1) (non-precedential) (rev’g preliminary injunction; claims in continuing patent are “patentably indistinct” from those in earlier action, due to disavowal in Spec. limiting scope of claims, despite change in claim language, and due to “strong clue” of terminal disclaimer); [see Indivior II (Fed. Cir. 07/12/19) (2-1) (aff’g same claim construction and non-infringement)].
  • Patent Infringement And Trademark Infringement Are Not Same Claim: Patent infringement claim based on sale of product not same claim as earlier trademark infringement claim based on mark used in advertising of same product. Superior Indus. (Fed. Cir. 11/27/12).

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