(2009-1026 Sept. 8, 2009) Claim preclusion barred the patentee from arguing that wood boards infringed because the boards were “essentially the same” with respect to the limitations at issue as boards previously found to be noninfringing. In a previous case, the defendant’s wood boards were found not to literally infringe based on two limitations. Furthermore, in that case the patentee had waived any argument for infringement under the doctrine of equivalents. In this suit, the patentee sought to argue infringement under the doctrine of equivalents for the defendants’ new product. The new boards were concededly materially different from those at issue in the first case in some respects, but not with respect to “the only two limitations leading to the judgment of noninfringement in the first suit.” (p. 6.)
Noting that this case presents a “slightly new angle on claim preclusion,” the court concluded that it should apply: “[If t]he accused device of the second suit remains unchanged with respect to the corresponding claim limitations at issue in the first suit, then [the plaintiff] has no remaining avenue to pursue his claims now. In essence, [the plaintiff] would be attempting to prove infringement of the same claim limitations as to the same features of the accused devices. As such, this case presents the exact situation that res judicata seeks to prevent.” (p. 7.)
The plaintiff also argued that the new boards were not “insubstantially different with respect to the pertinent claim elements,” but to no avail. So the “tactical decision” to not pursue an infringement theory based on the doctrine of equivalents in the first suit “did not pay off” and the plaintiff did not get “a second bite at the apple.” (p. 8-9.)
Note: This case was decided on claim preclusion grounds but might more precisely have been decided based on issue preclusion since the products were admittedly materially different but the dispositive infringement issue was the same.