On August 28, 2024, the Federal Circuit issued a precedential choice concerning situation preclusion in Wisc. Alumni Research Found. v. Apple Inc., Nos. 2022-1884, 2022-1886. For situation preclusion to apply, “the issue actually litigated in the first action must be identical to the issue in the second action,” see Op. at 26, however “the factors and tests [need not] be identical for issues to be identical.” See id. at 27.
In the primary case, the plaintiff had deserted its concept of infringement below the doctrine of equivalents earlier than trial and proceeded solely on literal infringement. See Op. at 7 n.2. The Federal Circuit affirmed the district court docket’s ruling that the plaintiff was precluded from retrying its declare for infringement below the doctrine of equivalents after an unsuccessful literal infringement declare. See Op. at 15 (“WARF was not foreclosed from raising the doctrine of equivalents at trial as an alternative to literal infringement”).
In the second case, the plaintiff asserted the identical patent in opposition to later generations of the accused product. The Federal Circuit upheld the district court docket’s dedication that situation preclusion barred the plaintiff from pursuing a doctrine of equivalents concept within the second case and that the Kessler doctrine barred the second case although the accused next-generation merchandise have been made/bought earlier than the ultimate judgment of non-infringement within the first motion. See Op. at 32-33 (prevailing non-infringer obtains the fitting to manufacture, use, and promote the accused product, which attaches to the product and “operates to grant a product noninfringer status”). Claim preclusion, not the Kessler doctrine, is “temporally limited to acts occurring after final judgment was entered in the first suit.” See Op. at 36 n.18.
Reasoning that each literal infringement and infringement below the doctrine of equivalents share the identical statutory foundation, 35 U.S.C. § 271(a), see Op. at 27-28, and that the doctrine of equivalents is proscribed to masking merchandise or processes which can be at most insubstantially totally different from what would actually infringe, see id. at 29 n.13, the Federal Circuit decided that the totally different merchandise accused within the second litigation have been “essentially the same” because the accused merchandise within the first litigation and that “literal infringement and the doctrine of equivalents are the same issue for issue-preclusion purposes.” See Op. at 22, 31.
“The prolonged litigation historical past is scattered with strategic selections that gave rise to the present attraction