Where Neither Claim Preclusion Nor Issue Preclusion Bar Assertion Of Claims, The Kessler Doctrine Bars Assertion Of New Claims Of The Same Patent Previously Held Noninfringing In An Earlier Action

In Brain Life, LLC v. Elekta Inc., No. 13-1239 (Fed. Cir. Mar. 24, 2014), the Federal Circuit affirmed the district court's SJ barring infringement claims on claim and issue preclusion grounds, and vacated the judgment because the Court found that the Kessler Doctrine precluded a majority of the claims.

Plaintiff Brain Life, LLC ("Brain Life") sued Defendant Elekta, Inc. ("Elekta") for infringement of the method claims of U.S. Patent No. 5,398,684 ("the '684 patent"). The '684 patent is directed to both a method and apparatus for generating a video image from a variety of separate scanner imaging sources.

Prior to this suit, the owner of the '684 patent, Medical Instrumentation Diagnostics Corporation ("MIDCO"), sued Elekta, alleging that Elekta's GammaKnife, GammaPlan, and SurgiPlan products infringed the '684 patent ("the MIDCO Litigation"). In the MIDCO Litigation, Elekta requested dismissal of the method claims prior to trial, which MIDCO did not oppose, and the method claims were dismissed without prejudice. After a jury trial, Elekta's products were found to infringe apparatus claim 1 of the '684 patent. On appeal, the infringement finding was reversed and the case was remanded for entry of judgment of noninfringement in Elekta's favor. On remand, MIDCO attempted to revive the '684 patent's previously dismissed method claims, but the trial court refused to reopen the case and entered final judgment that Elekta's GammaKnife, GammaPlan, and SurgiPlan products did not infringe the '684 patent. The district court's refusal to reopen the case was subsequently affirmed on appeal.

In the present suit, which Brain Life, a licensee of the '684 patent, filed against several defendants, including Elekta, Brain Life alleged that Elekta's GammaKnife, GammaPlan, and SurgiPlan products, as well as Elekta's ERGO++ treatment systems, infringed the method claims of the '684 patent. The district court granted SJ in favor of Elekta, holding that Brain Life's claims against Elekta were barred, because there was no material difference between the accused products in this suit and the previously adjudicated noninfringing products with respect to the apparatus claims. The district court also barred Brain Life from asserting the method claims of the '684 patent against Elekta because MIDCO could have pursued the method claims in the MIDCO Litigation but chose not to, and once final judgment was entered in favor of Elekta, Elekta developed and sold its...