Claims that Defendant Infringed Patent Issued Years after Suit Filed Found Subject To Claim Preclusion

Normally, claim preclusion only bars later assertion of a claim only if (a) the plaintiff could have brought that claim when it filed an earlier suit and (b) the later-asserted claim is the “same” as a claim in the first case (courts take different approaches to how closely related the later claim must be to the first, but the federal rule is to look at whether the later-asserted claim arises out of the same operative facts as the earlier claim).  So, normally, if a patent issues to the plaintiff after the first suit is filed, claim preclusion wouldn’t apply because of the first step:  you can’t sue for infringement until the patent issues (with the narrow exception of seeking “provisional damages” for infringement under Section 154).

But, in a recent case, a district court held that the plaintiff had a “duty to seek to amend” its complaint to add a later-issued patent, and to the extent the defendant can show that its infringement arose out of the same set of facts as the earlier case, claim preclusion will (and does) apply. The case, XY, LLC v. Trans Ova Genetics, LC (D. Colo. 2018), is here.  One of the two patents issued after the complaint had been filed, and a second actually issued after judgment in the first case had been entered!  (The district court also took what may prove to be a very unworkable approach to determining the second step.)

So, be careful out there: this creates a real mess because now you’re going to have to assert every possible patent for infringement, and if a new one issues, you better move to amend and hope the judge grants the motion, or doesn’t, because then you’ll be starting all over again with discovery, claim differentiation issues, and so on…  If you’re a defendant, maybe you should consider seeking a declaration as to patents the plaintiff owns, but hasn’t asserted, and just make a mess that way.

6 thoughts on “Claims that Defendant Infringed Patent Issued Years after Suit Filed Found Subject To Claim Preclusion

  1. 3

    Well, not “every possible patent” but every patent with very similar claims to the “first” patent. Why should that be difficult (or “messy”) for patentees?

  2. 2

    Rehearing denied in Helsinn, seemingly by a 12-0 vote. Strangely, Judge O’Malley’s concurring opinion isn’t on the website.

  3. 1

    this creates a real mess because now you’re going to have to assert every possible patent for infringement

    Well, not “every possible patent” but every patent with very similar claims to the “first” patent. Why should that be difficult (or “messy”) for patentees?

    if a new one issues, you better move to amend and hope the judge grants the motion, or doesn’t

    That method of hoping is a good way to avoid disappointment.

    1. 1.1

      Well, have fun with figuring out what are close enough claims. And let’s test this further. You file suit on the ‘123 patent because the product infringes due to feature A. You own a patent, the ‘456 on a completely different feature, but the product has that feature. Claim preclusion or not?

      1. 1.1.1

        Using your statement of the rule:
        “(b) the later-asserted claim is the “same” as a claim in the first case (courts take different approaches to how closely related the later claim must be to the first, but the federal rule is to look at whether the later-asserted claim arises out of the same operative facts as the earlier claim.”

        I would hazard two paths:
        you have the same product, but a different patent family (patent family two) that is in the same field as the first patent family–>
        (1) preclusion because of the same field;
        or
        (2) no preclusion because the same operative facts revolve around (i) the genesis of the first patent family and not the second patent family, and (ii) the accused product(s).

        The first seems overly narrow, but you can (always) argue the judicial economy argument from that side.

      2. 1.1.2

        have fun with figuring out what are close enough claims.

        We do this kind of thing for a living, David. It’s bread and butter.

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