Federal Circuit Affirms Dismissal of Patent Infringement Complaint Under Res Judicata

Holding: When an alleged infringer has demonstrated non-infringement, the specific accused devices acquire the status of “non-infringing devices” and res judicata will apply to an action brought for the same acts of infringement.

Federal CircuitThe Federal Circuit recently affirmed a decision by the U.S. District Court for the Northern District of California dismissing a complaint for patent infringement on the grounds of res judicata. See Sowinski v. Cal. Air Res. Bd., No. 2019-1558, 2020 U.S. App. LEXIS 26616 (Fed. Cir. Aug. 21, 2020) (Before Newman, Lourie, and Schall, Circuit Judges) (Opinion for the Court, Newman, Circuit Judge).

On November 24, 2015, Dr. Richard Sowinski, the owner of Patent No. 6,601,033 (the ’033 patent), sued the California Air Resources Board (CARB) and several individual and corporate defendants for infringement of the ’033 patent. After Dr. Sowinski failed to file a response to several motions to dismiss, the district court dismissed the complaint with prejudice and without leave to amend pursuant to Central District of California Local Rule 7–12. On appeal, the Federal Circuit affirmed the dismissal, concluding that the Central District of California had considered all of the relevant factors and that there was no clear error of judgment.

A few years later, Dr. Sowinski filed a complaint in the U.S. District Court for the Northern District of California against CARB, stating the same counts as in the previous case. The Northern District of California dismissed the complaint on the grounds of res judicata, observing that the dismissal of the same claims in the prior litigation against the same defendant was an adjudication on the merits, i.e., CARB did not infringe.

On appeal, Dr. Sowinski argued that res judicata was improper because the first case was not decided on the merits but on procedural grounds. Dr. Sowinski further argued that res judicata was inapplicable because, in the present case, he sought relief only for infringement after the decision in the first case.

Following case precedent set forth in Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014), the Federal Circuit acknowledged that preclusion does not apply to new or changed products or methods, but does apply when the accused products or methods are essentially the same and an accused infringer that has demonstrated non-infringement acquires the status of a “non-infringer.” Because Dr. Sowinski alleged the same infringing activity of the same patent against the same defendant, the Federal Circuit affirmed the Northern District of California’s decision finding that the district court had properly applied res judicata to dismiss the case.

The Author

Joseph Robinson & Robert Schaffer

Joseph Robinson & Robert Schaffer  

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson & Robert Schaffer

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 1 Comment comments. Join the discussion.

  1. Pro Say August 29, 2020 5:20 pm

    “Res judicata must be respected.” *

    * present company excepted, of course.

    — CAFC

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website