In 1991, the Federal Circuit held that a judgment on the merits in a patent infringement action bars future claims based on products that are “essentially the same” as the product at issue in the former suit. This rule governed claim preclusion in patent actions until at least 2009. Then, in 2012, the Federal Circuit upended the apple cart with Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012), holding that a judgment in an infringement suit never bars future claims against products that could not have been accused in the former litigation, essentially the same or not. The court reaffirmed this rule in 2014 in Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 (Fed. Cir. 2014). The Federal Circuit introduced this change in the law for a good reason: the “essentially the same” rule had the unfortunate effect of granting an adjudged infringer a license to continue infringing, secure in the knowledge that claim preclusion would bar a second suit. Unfortunately, Aspex and Brain Life are squarely in conflict with earlier Federal Circuit precedent. Because one three-judge panel cannot overrule another, the “essentially the same” test remains the law. The en banc Federal Circuit should address this conflict, and resolve it in favor of Aspex and Brain Life.
Aspex Eyewear, Inc. V. Marchon Eyewear, Inc. and Brain Life, LLC. V. Elekta, Inc.: Irreconcilable Conflict in the Law Governing Claim Preclusion in Patent Cases,
Chi. -Kent J. Intell. Prop.
Available at: http://scholarship.kentlaw.iit.edu/ckjip/vol14/iss2/3