Claim Against Joint Infringer Barred by Prior Suit Against Other Infringer

Transclean Corp. v. Jiffy Lube International, Inc., [06-1077](January 18, 2007)[PLAGER,Michel and Bryson] The Federal Circuit affirmed summary judgment of for Jiffy Lube on the issue of claim preclusion, that a prior judgement against the maker and user of the accused equipment barred action against Jiffy Lube, the user of accused equipment.
SIGNIFICANCE: Sue joint infringers at the same time.
BRIEF: Transclean successfully sued Bridgewood for infringement of its patent on a system for servicing a transmission, although Transclean never collected the damages it was awarded. Transclean then sued Bridgewood’s customers for a royalty. The Federal Circuit distinguished the full compensation rule which operates to implied license a device when the patentee receives full compensation, from claim preclusion, which prevents the patentee from bringing the same claim twice. A plaintiff who chooses to bring two separate actions against two tortfeasors who are jointly responsible for the same injury runs the risk that the court will find the parties sufficiently related that the second action is barred by claim preclusion. While Transclean argued that the present case was different from the earlier case against Bridgewood, the Federal Circuit noted that the same patent and the exact same devices were involved. The Federal Circuit said that the issue of claim preclusion turned on whether the current defendants and the prior defendant were so close that they were in privity. On this point, Transclean had argued that the parties were in privity in its unsuccessful attempt to bind the defendants to the prior holdings of validity and infringement. The Federal Circuit held that Transclean should be bound by its claim of privity under the doctrine of judicial estoppel.