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.
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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.
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