Collecting damages incurred following a finding of liability can be difficult. One avenue to collection that will not work, recounted in a recent decision by magistrate judge Leonard P. Stark, involves filing a new action.
According to the Court, such a maneuver constitutes improper claim-splitting:
“Because [plaintiff’s] pre-trial requests for damages for infringement in [the earlier litigation] sought damages only for the period through the jury verdict . . . , the Court determined that [plaintiff] failed to preserve its right to an accounting necessary for obtaining damages . . . . To allow [plaintiff] to present the same waived claim – involving the very same infringement of the very same patents by the very same 106 Accused Products – in a new lawsuit would seem to permit claim-splitting.”
Notably, however, the Court did not completely foreclose the availability of damages for later acts of infringement:
“I am not prepared to find on the record before me that a patentee that waives its right to a post-verdict accounting is absolutely prohibited from seeking damages from the same alleged infringer for later acts of infringement in a second suit . . . .”
Thus, at least for now, the line between the waived accounting damages and any new acts of infringement remains blurred.