Brain Life, LLC v. Elekta Inc.
746 F.3d 1045
Fed. Cir.2014Background
- Brain Life alleged infringement of the method claims of the ’684 patent by Elekta.
- MIDCO sued Elekta in 1997 for infringing the same patent; the district court later dismissed MIDCO’s method claims without prejudice after our MIDCO decision limited app. claims.
- In 2009 MIDCO licensed the patent to a third party, which licensed Brain Life; Brain Life then sued Elekta in 2010 (Brain Life I) for method and apparatus claim infringement.
- The district court granted Elekta summary judgment, holding Brain Life’s method claims were barred by claim preclusion under the MIDCO final judgment; the court did not bar ERGO++ post-judgment claims.
- This court partly agrees that preclusion bars some claims, but applies the Kessler Doctrine to preclude only pre-final-judgment activity on basically same products, while allowing post-judgment activity and ERGO++ claims to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is Brain Life barred by claim preclusion? | Brain Life contends different claim scope and post-judgment acts avoid preclusion. | Elekta argues the MIDCO final judgment bars all pre-judgment infringement claims. | Claim preclusion bars pre-final-judgment acts; not all post-judgment acts. |
| Do issue preclusion or Kessler apply to post-judgment infringement? | Aspex-style rationale should permit post-judgment claims. | Kessler precludes continuing infringement on essentially same products. | Issue preclusion does not bar post-judgment method claims; Kessler Doctrine applies to precluded products, not ERGO++. |
| Does the Kessler Doctrine bar Elekta’s GammaKnife/GammaPlan/SurgiPlan claims? | Brain Life asserts method claims in post-judgment period not barred by Kessler. | Kessler bars infringement on products held noninfringing in MIDCO. | Kessler bars Brain Life’s claims for GammaKnife, GammaPlan, SurgiPlan. |
| Are ERGO++ claims barred? | ERGO++ did not exist in MIDCO and was not litigated. | ERGO++ is similar to litigated products; some preclusion may apply. | ERGO++ claims are not barred and remanded for proceedings. |
Key Cases Cited
- Nystrom v. Trex Co., 580 F.3d 1281 (Fed. Cir. 2009) (claim preclusion requires same claim and final judgment)
- Foster v. Hallco Mfg. Co., 947 F.2d 469 (Fed. Cir. 1991) (essential facts include the patent-infringing device’s structure)
- Hallco Mfg. Co. v. Foster, 256 F.3d 1290 (Fed. Cir. 2001) (application of preclusion in patent cases)
- Aspex Eyewear Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335 (Fed. Cir. 2012) (sequential acts allow post-judgment claims for new conduct)
- Kessler v. Eldred, 206 U.S. 285 (Supreme Ct. 1907) (limited trade right after final judgment for ongoing same activity)
- MGA, Inc. v. General Motors Corp., 827 F.2d 751 (Fed. Cir. 1987) (Kessler Doctrine applied to bar relitigation of same products)
- Young Eng’rs Inc. v. U.S. Int'l Trade Comm’n, 721 F.2d 1305 (Fed. Cir. 1983) (essential fact of a patent infringement claim)