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No claim preclusion unless second accused product essentially the same as product in first suit

By McKee, Voorhees & Sease, P.L.C.

In a Tuesday decision, the Federal Circuit reversed a district court finding that a patent infringement suit was barred by claim preclusion.  At issue was whether a claim for patent infringement was barred under the doctrine of claim preclusion when that claim could have been brought in a prior case.  The patentee sued for infringement on the basis of one product, and during that lawsuit, learned of a second product that was the subject of the second infringement suit.  The district court held the claim precluded because a claim of infringement based on the second product could have been added in the first case, and that the Federal Circuit's "essentially-the-same" test for preclusion only applied where the second claim could not have been brought in the first action.

The Federal Circuit reversed, and the court disagreed with the district court's interpretation that the "essentially-the-same" test was limited to cases where the accused device could not have been included in the prior action.  The proper test of claim preclusion, according to the court, is that a claim for patent infringement based on a second accused product or method can only be barred where the second product or method is essentially the same as an accused product or method in a prior action.  The accused infringer admitted this was not the case here, so the court reversed the finding of preclusion.

More concerning Acumed LLC v. Stryker Corp. after the jump.

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Full post as published by FileWrapper on May 14, 2008 (boomark / email).