Claim Preclusion

Claim preclusion (res judicata) is a common law doctrine that bars re-litigation of claims that were decided or could have been decided in a prior action: THREE ELEMENTS: (1) the same parties or those in privity; (2) a final judgment on the merits in the prior action; (3) the second action involves the same claim or cause of action as the prior action; ALL THREE MUST BE PRESENT: if any element is missing, claim preclusion does not apply; WHAT IS 'FINAL JUDGMENT ON THE MERITS': a judgment is final on the merits when it definitively resolves the parties' rights — not merely procedural dismissals; examples: verdict after trial, summary judgment on the merits, consent judgment, judgment of non-infringement, judgment of invalidity; a dismissal without prejudice is NOT a final judgment on the merits and does not trigger claim preclusion; PATENT-SPECIFIC APPLICATION: (1) REPEAT INFRINGEMENT SUITS: after a final judgment of non-infringement or infringement, the patent owner cannot re-sue the same defendant for infringement of the same patent claims on the same accused products during the patent term covered by the first suit; (2) INVALIDITY DEFENSES: after a final judgment upholding patent validity, the defendant is precluded from re-raising invalidity defenses in a subsequent suit (though 'issue preclusion' — collateral estoppel — may be the more precise doctrine for identical issues); (3) LICENSING DISPUTES: a final judgment in a breach-of-license action between the parties bars re-litigation of the same licensing dispute.

The 'same claim' test determines whether claim preclusion bars the second action — and in patent cases, this is nuanced: TRANSACTIONAL APPROACH: most federal courts (including the Federal Circuit) use a 'transactional' definition of 'same claim': all claims arising from the same transaction or series of transactions are considered part of the same claim for preclusion purposes; PATENT CASE COMPLEXITY — PRODUCTS: (1) SAME PRODUCT: if the second suit involves the exact same product as the first suit, and the same patent claims are at issue, claim preclusion typically applies; (2) NEW VERSION OF PRODUCT: if the defendant releases a new product after the first suit, this may constitute a new transaction not barred by preclusion — but only if the new product is 'more than colorably different' from the old product (see Acumed v. Stryker, Fed. Cir. 2009); the 'more than colorably different' test asks whether the new product raises a 'new issue of infringement'; (3) SAME PRODUCT, DIFFERENT TIME PERIOD: a prior judgment of non-infringement or infringement on an existing product bars claims for the SAME period; claims for FUTURE infringement (after the judgment date) are not barred — but new suits for the same product going forward may be barred if there is an injunction or the product is unchanged; DIFFERENT PATENT CLAIMS: a prior suit on Claim 1 of a patent does not bar a subsequent suit on Claims 2 and 3 of the same patent if those claims were not litigated — the 'same claim' refers to the cause of action, not the patent claims; BUT a failure to assert all relevant patent claims in the first suit may result in preclusion of unasserted claims arising from the same transaction.

The Kessler doctrine is a patent-specific preclusion rule that extends beyond standard claim preclusion: KESSLER DOCTRINE: Kessler v. Eldred (S.Ct. 1907): a manufacturer who obtains a final judgment of non-infringement acquires a 'limited license' to continue making and selling the adjudicated non-infringing products, protected against subsequent infringement suits for those products; WHAT KESSLER ADDS BEYOND CLAIM PRECLUSION: claim preclusion bars the same parties from re-litigating; the Kessler doctrine also protects the adjudicated non-infringer's CUSTOMERS and distributors from subsequent patent infringement suits by the same patentee; MODERN REVIVAL — Brain Life, LLC v. Electro-Core (Fed. Cir. 2014): the Federal Circuit reaffirmed and applied the Kessler doctrine; a second patent suit that seeks to 'effectively undo' the prior non-infringement judgment, even against customers, is barred; INTERACTION WITH CLAIM PRECLUSION: claim preclusion requires privity between parties; the Kessler doctrine does not require privity — it protects downstream customers and distributors who were not parties to the original suit; WHY KESSLER MATTERS: a patent owner who loses a non-infringement suit against the manufacturer cannot salvage the economic result by suing the manufacturer's customers for selling the adjudicated non-infringing product; LIMITATION: the Kessler doctrine applies to specific products that were specifically adjudicated — it does not create a blanket license for the manufacturer's entire product line.

Claim construction rulings create complex preclusion issues in patent cases: MARKMAN RULINGS — ISSUE PRECLUSION: when a court construes a patent claim in a first case, that construction may bind the parties in a second case (issue preclusion / collateral estoppel); this applies if: (1) the same patent claim is at issue; (2) the same parties (or those in privity); (3) the claim construction was essential to the judgment; (4) the party to be bound had a full and fair opportunity to litigate the claim construction; COLLATERAL ESTOPPEL ON CLAIM CONSTRUCTION: if a district court construes a claim and the parties litigate to judgment, the Federal Circuit's appeal creates binding claim construction that must be used in subsequent cases between the same parties; COMPLICATION — CHANGED CIRCUMSTANCES: if the accused product changes, or if new evidence not available in the first case becomes available, claim construction collateral estoppel may not apply to the new case; A NEW ASSERTED PATENT: if the patent owner asserts a DIFFERENT patent in the second suit, there is no claim preclusion (different cause of action) and the prior claim construction of a DIFFERENT patent has no preclusive effect; INTER PARTES REVIEW INTERACTION: when a PTAB IPR proceeding construes a claim (now under Phillips standard) and issues a Final Written Decision, that construction has some preclusive effect in related district court litigation — but courts debate the exact scope; WHAT IS PRECLUDED vs. WHAT IS NOT: standard claim preclusion bars re-litigation of the SAME cause of action; issue preclusion (collateral estoppel) bars re-litigation of SPECIFIC ISSUES (like claim construction of a specific term) that were necessarily decided.

Claim preclusion and issue preclusion are distinct doctrines that apply differently in patent cases: CLAIM PRECLUSION (RES JUDICATA): bars the entire CAUSE OF ACTION; requires same parties, same claim/cause of action, final judgment on merits; even claims that COULD HAVE BEEN brought (but were not) are barred; applies to the full transaction or occurrence; ISSUE PRECLUSION (COLLATERAL ESTOPPEL): bars re-litigation of specific ISSUES that were: (1) actually litigated and decided; (2) essential to the judgment in the prior proceeding; (3) litigated by a party against whom preclusion is sought; does NOT require the same cause of action — can apply across different lawsuits; PATENT APPLICATIONS: (1) INFRINGEMENT PRECLUSION: prior judgment of non-infringement on Product X bars later suit on Product X under the same patent claims (claim preclusion); (2) VALIDITY PRECLUSION: prior judgment upholding validity (or invalidity) of specific patent claims bars re-litigation of those validity questions between same parties (issue preclusion); (3) CLAIM CONSTRUCTION PRECLUSION: prior claim construction of specific terms bars re-litigation of those terms between same parties (issue preclusion); (4) PATENT OWNER'S INVALIDITY PRECLUSION: if the patent owner litigated and won a validity determination, a second infringer cannot re-raise the same invalidity argument (for same prior art) if they were in privity with the first infringer (issue preclusion); NON-MUTUAL ISSUE PRECLUSION: an issue decided against the patent owner in one suit may bind it in suits against DIFFERENT defendants — 'offensive non-mutual collateral estoppel'; courts are divided on applying this to patent invalidity determinations.