Yesterday, Dec. 5, 2012, in Cummins, Inc. v. TAS Distributing Company, Inc., No. 2010-1134, the Federal Circuit (Newman, Bryson, and Reyna) affirmed a decision by the Central District of Illinois that patent invalidity and unenforceability claims were precluded by a prior contract action arising from a patent licensing dispute concerning the contractual terms of the license to the patent.  This case cautions that not raising patent challenges in a breach of contract action over a license under the patent may bar challenging the patent in a later action.
Continue Reading Patent Alert: Federal Circuit applies res judicata to bar patent infringement defenses not raised in earlier contract action (Cummins v. TAS)

Today, Wed., Mar. 14, 2012, in Aspex Eyewear v. Marchon Eyewear, No. 2011-1147, the Federal Circuit (Rader, Bryson and Reyna) ruled that res judicata barred a patent owner from asserting new and amended claims issued from reexamination against products that were found not to infringe the original patent.  The Court also ruled that a patent owner may include new products in a pending litigation, but is not required to do so.  Issue preclusion, however, may apply to those new products in a following action.
Continue Reading Patent Alert: Federal Circuit rules res judicata bars action on claims amended or added in reexam (Aspex Eyewear v. Marchon Eyewear)