In a recent decision by the U.S. Court of Appeals for the Federal Circuit on application of claim preclusion, a patentee who choose not to add a device to a pending litigation was found to have preserved its right to have a second bite of the apple with regard to another accused device that was not "essentially the same" as the subject of the first trial. Acumed LLC v. Stryker Corp. et al., Case No. 07-1115 (Fed. Cir., May 13, 2008).
Acumed alleged that Stryker's T2 Proximal Humeral Nail infringed certain patent claims relating to orthopedic surgical equipment. During the discovery period, Acumed ascertained that Stryker had developed, but was not yet marketing, a longer version of the T2 nail. Approximately a year after filing the suit and four months after the close of fact discovery, Stryker began publicly marketing and selling a longer version of the accused T2 nail in the United States. A few months after Stryker began marketing and selling its Long T2 nail, Acumed sought to add the Long T2 nail to the pending litigation. In an effort to avoid facing another infringement claim, Stryker argued that that the Long T2 nail differed from the accused T2 with respect to some of the claim elements and therefore should not be added to the case. The district court presented Acumed with a decision: either include the Long T2 nail as an accused product in the present action and extend the trial date for a year or forego the new patent infringement claim and maintain the present trial date. In an effort to maintain its trial date, Acumed chose to postpone infringement claim against Long T2 nail and proceed to trial only on the (original) T2 nail infringement claim. After a jury determination of willful infringement with respect to the T2 nail, Acumed filed a new action, accusing the Long T2 nail of infringing the same patent claims previously adjudicated. The district court held that because Acumed could have litigated the Long T2 nail in the previous case but chose not to, Acumed was now precluded from asserting another patent infringement claim against the Long T2 nail. Acumed appealed.
The Federal Circuit rejected the "could have litigated" test, reasoning that "claim preclusion does not bar a claim merely because it could have been raised in a prior action between the parties that was resolved by a final judgment on the merits." Instead, the Federal Circuit applied the "essentially the same" test. Under this test, "[a]ccused devices are 'essentially the same' where the differences between them are merely 'colorable' or 'unrelated to the limitation in the claims of the patent.'" The Federal Circuit reasoned that because the district did not compare the accused T2 nail with the new Long T2 nail and because Stryker's own representations that its Long T2 nail differed from the accused T2 nail, the district court erred in applying claim preclusion to the instant case. The arguments advanced by Stryker in an attempt to stop Acumed from adding the Long T2 nail in the first case essentially ensured that the fight between Acumed and Stryker would continue on to another patent case.
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