Infringement Claim Preclusion Only Applies When the Devices are Essentially the Same

Acumed LLC, v. Stryker Corporation, [2007-1115] (May 13, 2008) [GAJARSA, Newman, Linn] The Federal Circuit reversed the determination that the patentee’s claims were precluded and remanded.
SIGNIFICANCE: A claim for patent infringement is not barred by a prior suit, unless the two devices are essentially the same.
BRIEF: During prosecution of an infringement claim against the T2 PHN product, Accumed became aware of a second product T2 LONG. Rather than delay trial, Accumed elected to proceed with its claim against the T2 PHN, which Accumed won. Accumed then claimed that the T2 LONG infringed, which the district court dismissed.
The Federal Circuit noted that Under the doctrine of claim preclusion “a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.” Whether two claims for patent infringement are identical is a claim preclusion issue that is “particular to patent law,” and therefore we analyze it under Federal Circuit law. The Federal Circuit rejected the contention that contention that a claim is barred by claim preclusion merely because it could have been raised in a prior action between the parties that was resolved on the merits.
A claim for patent infringement can only be barred by claim preclusion if that claim arises from the same transactional facts as a prior action. Moreover, one of the essential transactional facts giving rise to a patent infringement claim is “the structure of the device or devices in issue. Thus, two claims for patent infringement do not arise from the same transactional facts unless the accused devices in each claim are “essentially the same. Because defendant conceded that the accused devices are not “essentially the same”, it has failed to meet its burden to show that the infringement claim in the earlier case is the same as the infringement claim in the present action.