In a recent decision, district judge Sue L. Robinson addressed the unsettled issue of whether a plaintiff may accuse the same product of infringement in successive suits. Answering in the affirmative, the Court held that a party can maintain a second cause of action so long as the injury alleged in the second suit arises from acts that post-date those considered in the first action.
Analyzing the issue as one of claim preclusion, the Court explained its reasoning:
“A judgment cannot be give the effect of extinguishing claims which did not then even exist. Defendants did not have FDA approval to market the [accused product] in 2005. Plaintiff could not have anticipated when FDA approval, and subsequent marketing and U.S. sales . . . would have commenced. Plaintiff could not have accurately predicted the amount or value of such sales in 2005, nor could the availability of any non-infringing alternatives been assessed . . . .”
As a result, “[t]he conduct at issue in this litigation occurred after the first judgment and could not possibly have been sued upon in the 03-027 case.”
With this decision, it appears that the continuing-tort theory of patent infringement is alive and well in the District of Delaware.