Вы находитесь на странице: 1из 12

Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 1 of 12

1
2
3
4
5
6
7
8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
10
11 ANTICANCER, INC., a California CASE NO. 09-CV-351 JLS (RBB)
Corporation,
12 ORDER GRANTING IN PART
Plaintiff, AND DENYING IN PART
13 vs. DEFENDANT’S MOTION TO
DISMISS
14
CAMBRIDGE RESEARCH & (Doc. No. 15.)
15 INSTRUMENTATION, INC., a Delaware
Corporation,
16
Defendant.
17
18
Presently before the Court is Cambridge Research & Instrumentation’s (“CRI”) Motion to
19
Dismiss this Action Pursuant to Rule 12(b)(6). The sole issue before this Court is whether the action
20
must be dismissed under the doctrine of res judicata. For the reasons set forth below, the Court
21
HEREBY GRANTS IN PART and DENIES IN PART Plaintiff’s motion to dismiss.
22
BACKGROUND
23
On January 12, 2007, AntiCancer initiated an action against Cambridge Research &
24
Instrumentations, Inc., alleging patent infringement of five different patents. (Case No. 07cv97
25
JLS (RBB) (“CRI I”), Doc. No. 1.) A Second Amended Complaint (“SAC”) was filed on June 27,
26
2007. (CRI I, Doc. No. 26.) On July 23, 2007, CRI filed its answer and counterclaims, including
27
counterclaims of non-infringement and invalidity of each of the five patents. (CRI I, Doc. No. 30.)
28
Magistrate Judge Brooks issued a Case Management Order in CRI I, ordering AntiCancer

-1- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 2 of 12

1 to serve a “Disclosure of Asserted Claims and Preliminary Infringement Contentions” (“PICs”) on


2 each defendant by October 15, 2007. (CRI I, Doc. No. 49.) The PICs were served two days after
3 its deadline and contained several deficiencies, prompting AntiCancer to move for leave to amend
4 its PICs on November 20, 2007. (CRI I, Doc. No. 65.) Magistrate Judge Brooks held a hearing on
5 the motion to amend on January 14, 2008. Over CRI’s objections at the hearing, Magistrate Judge
6 Brooks gave AntiCancer permission to file a supplemental declaration to show good cause for the
7 PICs’ defects and scheduled a second hearing. (CRI I, Doc. No. 77 (hearing transcript).)
8 At the second hearing, held on January 31, 2008 after the supplemental document had been
9 filed, Magistrate Judge Brooks found that AntiCancer had not sufficiently established “good
10 cause” to amend the PICs and therefore denied leave to amend. (CRI I, Doc. Nos. 92, 88.) On
11 February 6, 2008, this Court upheld Magistrate Judge Brooks’ Order, finding it “was not clearly
12 erroneous or contrary to law.” (CRI I, Doc. No. 106 at 8.)
13 Two defendants named in CRI I, NIBRI and Merck, moved for summary judgment. (CRI
14 I, Doc. Nos. 95, 62.) On May 14, 2008, this Court granted summary judgment of non-
15 infringement in favor of Merck and NIBRI because they were parties absent from AntiCancer’s
16 PICs. (CRI I, Doc. No. 115.) Similarly, AntiCancer’s defective PICs contained no reference to
17 two of the five patents, and the parties filed a joint motion dismissing those infringement claims
18 with prejudice. (CRI I, Doc. Nos. 148, 150.)
19 As to the remaining three patents, CRI filed motions for summary judgment of non-
20 infringement of these patents based on the defective PICs. (CRI I, Doc. No. 139.) On February
21 13, 2009, this Court granted CRI’s motion for summary judgment of non-infringement as to all
22 three patents. (CRI I, Doc. No. 214.) AntiCancer was barred from asserting any evidence other
23 than those disclosed in the PICs in its opposition. (Id. at 7.) Accordingly, the only evidence of
24 infringement considered by the Court were an article where CRI cited an article previously
25 published by AntiCancer’s Dr. Hoffman and two photographs on CRI’s website. (Id.)
26 The invalidity claims asserted by CRI remain to be adjudicated, thus the summary
27 judgment grant was not a final judgment in CRI I. (Cf. CRI I, Doc. No. 225, making the summary
28 judgment in favor of Merck a final judgment.)

-2- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 3 of 12

1 On February 23, 2009, AntiCancer filed its complaint initiating the present action and filed
2 a first amended complaint (“FAC”) on March 19, 2009. (Case No. 09cv351 (“CRI II”), Doc. Nos.
3 1, 14.) The FAC asserts patent infringement against CRI for the three patents not dismissed with
4 prejudice and whose invalidity claims are still pending in CRI I – the ‘159, ‘384, and ‘038 patents.
5 (CRI II, Doc. No. 14.) CRI filed the present motion to dismiss the FAC pursuant to Rule 12(b)(6)
6 on April 2, 2009. (CRI II, Doc. No. 14.) AntiCancer filed its opposition on May 20, 2009 (CRI II,
7 Doc. No. 16) and CRI filed its reply on May 28, 2009 (CRI II, Doc. No. 17.) The hearing date
8 originally set for June 4, 2009 was thereafter vacated and the motion was taken under submission
9 on its papers.
10 LEGAL STANDARD
11 A. Rule 12(b)(6)
12 Federal Rule of Civil Procedure 12(b)(6) permits a court to dismiss a complaint for two
13 reasons: (1) lack of a cognizable legal theory or (2) pleading of insufficient facts under an
14 adequate theory. Balistreri v. Pacifica Police Dep’t, 901 F.2d 696, 699 (9th Cir. 1990) (internal
15 citation omitted). In reviewing a Rule 12(b)(6) motion to dismiss, the Court must assume the truth
16 of all allegations of material fact and construe inferences in the light most favorable to the
17 nonmoving party. Cedars-Sinai Med. Ctr. v. Nat'l League of Postmasters of the U.S., 497 F.3d
18 972, 975 (9th Cir. 2007). While the complaint need not contain detailed factual allegations, “a
19 plaintiff’s obligation to provide the ‘grounds’ of his ‘entitle[ment] to relief’ requires more than
20 labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do.”
21 Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 1964–65 (2007) (citing Papasan v.
22 Allain, 478 U.S. 265, 286 (1986)). In other words, “conclusory allegations of law and
23 unwarranted inferences are not sufficient to defeat a motion to dismiss.” Associated Gen.
24 Contractors of Am. v. Metro. Water Dist., 159 F.3d 1178, 1181 (9th Cir. 1998) (quoting Pareto v.
25 FDIC, 139 F.3d 696, 699 (9th Cir. 1998)).
26 Where a motion to dismiss is granted, “leave to amend should be granted ‘unless the court
27 determines that the allegation of other facts consistent with the challenged pleading could not
28 possibly cure the deficiency.’” DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655, 658 (9th Cir.

-3- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 4 of 12

1 1992) (quoting Schreiber Distrib. Co. v. Serv-Well Furniture Co., 806 F.2d 1393, 1401 (9th Cir.
2 1986)). In other words, where leave to amend would be futile, the Court may deny leave to
3 amend. See Desoto, 957 F.2d at 658; Schreiber, 806 F.2d at 1401.
4 B. Res Judicata and Claim Splitting
5 For general principles of res judicata, the law of the Ninth Circuit applies. Id. The Ninth
6 Circuit applies claim preclusion where: “(1) the same parties, or their privies, were involved in the
7 prior litigation, (2) the prior litigation involved the same claim or cause of action as the later suit,
8 and (3) the prior litigation was terminated by a final judgment on the merits.” Cent. Delta Water
9 Agency v. United States, 306 F.3d 938, 952 (9th Cir. 2002) (citations omitted). For principles
10 specific to patent law, however, the law of the Federal Circuit applies. Acumed LLC v. Stryker
11 Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008).
12 The second requirement – the “same claim” requirement – is specific to patent law and so
13 the law of the Federal Circuit applies. Acumed, 525 F.3d at 1323. The Federal Circuit defines a
14 “claim” by the transactional facts from which it arises. See Foster v. Hallco Mfg. Co., Inc., 947
15 F.2d 469, 477 n.7 (Fed. Cir. 1991) (citing Restatement (Second) of Judgment § 24)).
16 The third requirement – a final judgment on its merits in the prior action – does not require
17 that the merits actually be adjudicated. See, e.g. Angel v. Bullington, 330 U.S. 183, 190 (1947) (“It
18 is a misconception of res judicata to assume that the doctrine does not come into operation if a
19 court has not passed on the ‘merits’ in the sense of the ultimate substantive issues of the
20 litigation.”) However, “it must be shown that [the new claims] were included in the judgment, and
21 that the interest of justice is not disserved by applying res judicata to claims that were never
22 presented for adjudication.” Id. at 1556.
23 Moreover, the related doctrine of claim splitting applies to determine whether a second
24 action on similar claims is barred though the prior action has not been terminated by rendering a
25 final judgment. See Adams v. State of CA Dept. of Health Servs., 487 F.3d 684, 688-89 (9th Cir.
26 2007). To determine if the second action is barred, the Ninth Circuit “borrow[s] from the test for
27 claim preclusion” – “In the claim-splitting context, the appropriate inquiry is whether, assuming
28 the first suit was already final, the second suit could be precluded pursuant to claim preclusion.”

-4- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 5 of 12

1 Id. at 688 (internal citations and quotation marks omitted).


2 DISCUSSION
3 For the reasons stated below, the Court DENIES CRI’s motion to dismiss the patent
4 infringement claims asserted in CRI II as they pertain to infringement actions postdating October
5 17, 2007 the date the defendants were served with the PICs in CRI I. As to those claims of
6 infringement which occurred on or before October 17, 2007, the Court GRANTS CRI’s motion to
7 dismiss, finding it is barred by the doctrine of res judicata.
8 I. Pre-October 17, 2007 Acts of Infringement
9 CRI contends that AntiCancer is barred from asserting any claims of infringement of the
10 three patents claimed in CRI II under the doctrine of res judicata because “[c]laim preclusion
11 applies to claims or causes of action, not facts.” (Reply to Opp. at 1.) In other words, CRI
12 contends that each patent raises an independent cause of action and all facts arising from that cause
13 of action – i.e. all acts or evidence of infringement – are subsequently barred by res judicata. The
14 Court agrees, but, as explained infra, only up until October 17, 2007.
15 Generally, res judicata bars claims or causes of action asserted in a second action if they
16 arose from the same transaction in the first action. See Foster, 947 F.2d at 477 n.7. In a patent
17 case, whether the claims are the “same” is dictated by Federal Circuit law. Acumed, 525 F.3d at
18 1323. The Federal Circuit has held that “one of the essential transactional facts giving rise to a
19 patent infringement claim is ‘the structure of the device or devices in issue.’” Id. at 1324 (quoting
20 Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 478 (Fed. Cir. 1991)). The Federal Circuit has
21 elaborated “that claim preclusion does not apply unless the accused device in the action before the
22 court is ‘essentially the same’ as the accused device in a prior actions between the parties that was
23 resolved by a judgment on the merits.” Foster, 947 F.2d at 479-80; see also Young Engineers, Inc.
24 v. U.S. Int’l Trade Comm’n, 721 F.2d 1305, 1316 (Fed. Cir. 1983) (“With respect to patents
25 litigation, we are unpersuaded that an ‘infringement claim,’ for purposes of claim preclusion,
26 embraces more than the specific devices before the court in the first suit. . . . Thus, the status of an
27 infringer is derived from the status imposed on the thing that is embraced by the asserted patent
28 claims, the thing adjudged to be infringing. By the same token, where the alleged infringer

-5- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 6 of 12

1 prevails, the accused devices have the status of noninfringements, and the defendant acquires the
2 status of noninfringer to that extent.”) In this case, CRI contends that the devices allegedly
3 infringed upon in CRI I are “essentially the same” as those now asserted in CRI II, and the current
4 litigation does not “embrace[] more than the specific devices before the court in the first suit.”
5 The Court agrees.
6 It is undisputed that the patents claimed to be infringed in both CRI I and CRI II are the
7 same three patents1 and that the allegedly infringing device is “CRI’s Maestro In Vivo Imaging
8 System.” (See CRI 1, Doc. No. 26; CRI II, Doc. No. 14.) The CRI II complaint explains that the
9 “Masetro In Vivo Imaging System” includes the following devices: the Maestro 1, Maestro 2, and
10 Dynamic Contrast Enhancement Solution, as well as the related device, the “Nuance” camera.
11 (CRI II, Doc. No. 14, ¶ 28.) These same devices were identified as “CRI’s Maestro imaging
12 systems” in CRI I as the infringing devices. (Compare CRI II, Doc. No. 14-2, Ex. 4 with CRI I,
13 Doc. No. 156-2, Ex. 4 (same document listing the Maestro 1, Mauestro 2, and Dynamic Contrast
14 Enhancement Solution).) The “Nuance” filter camera is also included in this document which was
15 used in support of the infringement claims in both CRI I and CRI II. (Id.) Furthermore, the
16 “Nuance” filter camera alleged as an infringing device was the “tuneable filter” asserted as an
17 infringement in AntiCancer’s opposition to CRI’s motion for summary judgment, which CRI
18 included in the “Mastro” system. (See CRI I, Doc. No. 156 at 4-5.) Simply because these devices
19 were not listed in the CRI I Complaint or PICs does not mean they were not the devices included
20 in the “Maestro In Vivo Imaging System” which AntiCancer asserted were the infringing devices.
21 AntiCancer’s claim, therefore, that the CRI II FAC “identifies multiple devices not listed in the
22 CRI I complaint or PICs which CRI and its customers are using to infringe (the Maestro 2,
23 Maestro 1, Dynamic Contract Enhancement Solution, and Nuance camera)” is disingenuous.
24 (Opp. to MTD at 5.) Accordingly, because no new infringing devices were presented in CRI II
25 that were not already presented in CRI I, the Court finds that these claims of infringement
26 constitute the “same claim” for purposes of res judicata.
27 Further, these acts of infringement satisfy the third requirement that the prior claim be
28
1
CRI I included claims of infringement of two other patents, but these were dismissed with
prejudice in CRI I and were not reasserted in CRI II.
-6- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 7 of 12

1 adjudicated on its merits – the Court granted summary judgment of non-infringement in favor of
2 CRI, effectively dismissing the claims of patent infringement of the three patents at issue. See
3 Mypoyo v. Litton Electro-Optical Systems, 430 F.3d 985, 988 (9th Cir. 2005) (“[A] summary
4 judgment dismissal . . . is considered a decision on the merits for res judicata purposes.”); see also
5 Hells Canyon Preservation Council v. U.S. Forest Service, 403 F.3d 683 (9th Cir. 2005) (“It is
6 certainly true that there was a final judgment on the merits of the action in HCPC I, as the district
7 court granted the government’s motion for summary judgment on HCPC’s NEPA claim.”) While
8 CRI’s invalidity counter-claims are still pending, the claims of infringement of the three patents at
9 issue reached final judgment on the merits when the court granted CRI’s motion for summary
10 judgment of the claims of infringement asserted by AntiCancer against CRI, effectively closing the
11 case regarding CRI’s alleged infringement in that litigation. (See CRI I, Doc. No. 214.)
12 Thus, the Court finds that all three requirements for res judicata have been met as to the
13 claims of infringement, but, as explained below, only as to those infringing actions which occurred
14 on or before October 17, 2007. The Court therefore grants CRI’s motion to dismiss with prejudice
15 all claims of infringement occurring prior to that date on the grounds of res judicata.
16 II. Post-October 17, 2007 Acts of Infringement
17 “[U]nder general principles of res judicata, the doctrine cannot bar plaintiffs from litigating
18 matters that were not within the scope of the claim litigated in [the first action].” Los Angeles
19 Branch NAACP (“LANAACP”) v. Los Angeles Unified Sch. Dist., 750 F.2d 731, 739 (9th Cir.
20 1984) (en banc). In LANAACP, the first action involved claims of unlawful segregative acts
21 occurring between 1963 and the close of the trial on May 2, 1969 by stipulation of the parties. Id.
22 A second action was subsequently filed, and the Ninth Circuit held that res judicata barred only the
23 acts occurring prior to the close of the original trial on May 2, 1969. Id. at 739, 740-41.
24 Accordingly, res judicata barred only those acts at issue in trial; the plaintiff was free to pursue
25 acts occurring after May 2, 1969. Id.
26 In its ruling in LANAACP, the Ninth Circuit rejected the argument that the scope of the
27 litigation which was barred must extend to all segregative acts occurring prior to the date the trial
28 court terminated the litigation in its entirety. Id. The court held that “[t]he scope of litigation is
framed by the complaint at the time it is filed” and that a plaintiff has leave to file a supplemental
-7- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 8 of 12

1 complaint to bring events outside the scope into the litigation. Id. In that case, however, the court
2 found that the stipulation between the parties defining the scope of the litigation and the acts which
3 were to be included operated as a supplemental pleading and refused to expand the scope of the
4 litigation any further for purposes of res judicata. Id. at 739-40.
5 The Supreme Court, albeit in the context of antitrust violations, has held the same: “While
6 the 1943 judgment precludes recovery on claims arising prior to its entry, it cannot be given the
7 effect of extinguishing claims which did not even exist and which could not possibly have been
8 sued upon in the previous case.” Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 328 (1955);
9 accord Harkins Amusement Enterprises, Inc. v. Harry Nace Co., 890 F.2d 181, 183 (“Obviously
10 the allegation that the defendants entered into conspiracies after the date of the Harkins I
11 complaint was not ruled upon by the decision in Harkin I. It is elementary that new antitrust
12 violations may be alleged after the date covered by decision or settlement of antitrust claims
13 covering an earlier period. . . . Failure to gain relief for one period of time does not mean that the
14 plaintiffs will necessarily fail for a different period of time . . . The defendants by winning Harkins
15 I did not acqure immunity in perpetuity from the anti-trust laws.”)
16 LAANACP holds that the operative complaint frames the scope of the litigation which may
17 be barred by res judicata, unless a supplemental pleading is filed bringing in events outside the
18 original scope. See LANAACP, 750 F.2d at 739. Here, the operative complaint is the SAC filed
19 on June 27, 2009.2 However, AntiCancer was given until October 15, 2007 to assert its PICs in
20 support of its claims of infringement and actually served such PICs on October 17, 2007. (See CRI
21 I, Doc. No. 49.) PICs are expected to be complete at the time they are served to include all
22 evidence of infringement available to the parties at that time, including the time between the filing
23 of the complaint and the service of the PICs, unless good cause is shown for why the PICs were
24 not complete at the time of service. (See CRI I, Doc. No. 77 at 6:2-8, 10:14-16.) Thus, as the
25 LANAACP court construed the joint stipulation as a supplemental pleading determining the scope
26 of the litigation, this Court construes the PICs as a supplemental pleading defining the scope of the
27
28 2
AntiCancer contends that the SAC was filed on June 22, 2007. The docket, however, clearly
indicates that the SAC is to be considered filed on the date of the Order granting AntiCancer’s motion
for leave to file the second amended complaint – June 27, 2007. (CRI I, Doc. No. 26.)
-8- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 9 of 12

1 litigation – the scope of the alleged infringement of the three patents at issue.
2 In this case, Magistrate Judge Brooks noted that AntiCancer’s defective PICs “were [not]
3 the fault of belatedly discovered evidence” and that good cause must be shown for leave to amend.
4 (Id. at 3:16-22, 5:11-12.) Magistrate Judge Brooks, however, found that AntiCancer had not
5 sufficiently established good cause for the defective PICs and therefore, after two hearings on the
6 matter and a supplemental declaration, denied AntiCancer’s motion for leave to amend. (CRI I,
7 Doc Nos. 88, 92.) Accordingly, the PICs as served on October 17, 2007 are taken to include all
8 evidence of infringement within the scope of the SAC (the operative complaint in CRI I). This
9 Court’s grant of summary judgment of non-infringement of the three patents in favor of CRI,
10 therefore, constitutes final adjudication on the merits of all acts or evidence of infringement prior
11 to October 17, 2007. Thus, res judicata bars all claims of infringement on or before that date.
12 However, those claims of infringement occurring after that date cannot be barred under general
13 principles of res judicata because they were not, nor could they have been, within the scope of the
14 first action. Los Angeles Branch NAACP (“LANAACP”) v. Los Angeles Unified Sch. Dist., 750
15 F.2d 731, 739 (9th Cir. 1984) (en banc).3
16 AntiCancer argues that the Court should only apply res judicata to the three pieces of
17 evidence asserted in the defective PICs. This is not correct. This Court granted summary
18 judgment in favor of CRI by finding that AntiCancer had not sufficiently established a genuine
19 issue of material fact of infringement. All the Court was able to consider were the facts alleged in
20 the PICs. This does not mean, however, that the Court granted summary judgment as to only those
21 alleged acts of infringement; summary judgment was granted for non-infringement of the claimed
22 patents as asserted in the Complaint, which included all alleged infringement prior to the service of
23 the PICs, whether asserted in the PICs or not.
24 AntiCancer cites Acumend in support of its assertion that it had not waived other acts of
25
26 3
This holding is consistent with case law from other circuit courts, as well. See Munoz v.
Aldridge, 894 F.2d 1489, 1495 (5th Cir. 1990) (finding that plaintiff’s “individual claims in this case
27 cannot be barred [on res judicata grounds] by his prior litigation of individual claims based on earlier,
different alleged instances of discrimination”); see also Spiegel v. Continental Illinois Bank, 790 F.2d
28 638, 646 (7th Cir. 1986) (holding that res judicata does not bar a second action “to the extent it is
based on acts which occurred after [the first action] was filed,” namely two newly discovered
predicate acts of mail fraud).
-9- 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 10 of 12

1 infringement prior to the service of the PICs because it did not assert them in its initial PICs. (See
2 Opp. to MTD at 12 - 15.) In Acumend, the district court offered plaintiff the opportunity to add
3 additional infringement claims, which the plaintiff declined and was successful at trial. 525 F.3d
4 at 1326-27. After trial, plaintiff filed a second infringement action against the same defendant. Id.
5 The Federal Circuit held that res judicata did not bar the second action simply because plaintiff
6 could have raised the allegations in the first action. Id. at 1326; see also Cromwell v. County of
7 Sac, 94 U.S. 351, 356 (1876) (“It is not believed that there are any cases going to the extent that
8 because in the prior action a different question from that actually determined might have arisen
9 and been litigated, therefore such possible question is to be considered as excluded from
10 consideration in a second action between the same parties on a different demand . . . On principle,
11 a point not in litigation in one action cannot be recieved as conclusively settled in any subsequent
12 actions upon a different cause, because it might have been determined in the first action.”); Hells
13 Canyon Pres. Council v. U.S. Forest Serv., 403 F.3d 683, 686 n.2 (9th Cir. 2005).) Thus, Plaintiff
14 argues that Acumend and Cromwell stands for the proposition that “just because AntiCancer might
15 have been able to allege some of the claims of CRI II in the first action, no law or Rule required it
16 to under pain of losing the right to do so forever.” (Opp. to MTD at 13.)
17 To be sure, both Acumend and Cromwell hold that merely because a claim could have been
18 raised, but was not, does not bar that claim from being raised in a later action. But, Acumend also
19 applies the “essentially the same” test for what constitutes a “claim.” The “claim” is not the facts
20 underlying that claim, such as those asserted in the PICs, but the claim itself – the claim of
21 infringement of the patent. In fact, after rejecting defendant’s “contention that a claim is barred by
22 claim preclusion merely because it could have been raised in a prior action between the parties
23 that was resolved on the merits,” the Acumed court applied the “essentially the same” the test.
24 Here, too, this Court is applying the “essentially the same” test regarding the allegedly infringing
25 devices, finding that the claims in both CRI I and CRI II are “essentially the same.” Accordingly,
26 though Acumend and Cromwell stand for the proposition that other devices or products or patents
27 that could have been asserted, but were not asserted, in the first actions are not later barred by res
28 judicata, the facts underlying those devices remain barred. That is the case here, and therefore

- 10 - 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 11 of 12

1 Acumend and Cromwell are inapposite.4


2 The Court also finds that this holding is consistent with the due process considerations
3 inherent in barring subsequent actions on the grounds of res judicata. “When applying res judicata
4 to bar causes of action that were not before the court in the prior action, due process of law and the
5 interest of justice require cautious restraint.” Kearns, 94 F.3d at 1556. “[I]t is not every such case
6 in which the policy of stopping litigation outweighs that of showing the truth.” Id. at 1557
7 (quoting Angel v. Bullington, 330 U.S. 183, 203 (1947)). Though CRI won on infringement
8 grounds in CRI I, it “did not acquire immunity in perpetuity” from the patent laws. See Harkins
9 Amusement Enterprises, 890 F.2d at 183-84 (in the context of antitrust laws); Young Engineers,
10 721 F.2d at 1316 (rejecting the “theory that under principles of res judicata [the defendant]
11 became an unfettered licensee” and finding that “the legal theory that any charge of infringement
12 based on the patent is barred [is] a clearly untenable position”).
13 While the Court determined that CRI was a non-infringer of the patents at issue based on
14 the allegations on or before October 17, 2007, CRI did not acquire immunity from further
15 allegations of infringement which had not, nor could they have been, litigated in the prior action.
16 For the reasons stated above, therefore, the Court denies CRI’s motion to dismiss the infringement
17 claims postdating October 17, 2007.5
18
19 4
Similarly, the unpublished case Jumpsport, Inc. v. Hedstrom Corp., 2004 U.S. Dist. LEXIS
20382 cited by AntiCancer is distinguishable. In Jumpsport, the court granted a motion in limine
20 excluding all non-Jumpguard products from trial and therefore only Jumpguard products were subject
to the final ruling. Id. at *4-5. Jumpsport then brought a second action asserting infringement of non-
21 Jumpguard products. The court held that “[i]n light of the fact that Jumpsport did not intend to waive
it claims [regarding non-Jumpguard products], and no judgment was issued on those products, res
22 judicata cannot be said to bar this [second] lawsuit.” Id. at *6. The court went on to find that
defendant also had not shown that the products were the “same cause of action” because the products
23 were different. Id. at *7. Jumpsport, being an unpublished opinion from the Northern District of
California, is not controlling. Moreover, neither of these rationales are dispositive in this case. In
24 Jumpsport, the court find that the defendant could not claim res judicata that it claimed was not within
the scope of the first trial. Id. at *9. Unlike in Jumpsport, here, the allegedly infringing products were
25 the same products as in CRI I and a judgment was issued on those products – the judgment was not
issued on the evidence underlying the infringement but on the existence of the infringement itself.
26
5
In its opposition, AntiCancer points to several allegations of infringement asserted in the
27 FAC in CRI II which post dated the filing of AntiCancer’s SAC in CRI I on June 22, 2007. (See Opp.
to MTD at 20 ns.19, 21). As explained above, AntiCancer is incorrect in asserting that the filing of
28 the SAC is the operative date because the operative date is the service of the PICs on October 17,
2007. The fact remains, however, that there are several allegations of infringement of the patents at
issue in both CRI I and CRI II which postdate October 17, 2007. (See, e.g., CRI II, Doc. No. 14, ¶ 40
- 11 - 9cv351
Case 3:09-cv-00351-JLS-RBB Document 20 Filed 01/19/10 Page 12 of 12

1 CONCLUSION

2 The Court HEREBY GRANTS IN PART and DENIES IN PART Defendant’s Motion to

3 Dismiss this Action Pursuant to Rule 12(b)(6) on res judicata grounds. The Court DISMISSES

4 WITH PREJUDICE all claims of infringement occurring on or before October 17, 2007 on res

5 judicata grounds. The Court DENIES the motion as to all claims occurring after October 17,

6 2007.

7
8 IT IS SO ORDERED.

9
10 DATED: January 19, 2010

11 Honorable Janis L. Sammartino


United States District Judge
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27 (CRI allegedly publishing AntiCancer’s images and data in its own patents); ¶ 60, Ex. 37 (in 2009,
NCI-Frederick Small Animal Imagaing Program practices AntiCancer’s patents).) Other evidence of
28 infringement is undated, but to the extent it is shown that these pieces of evidence could not have been
asserted in the original PICs (had they not been defective), they too are not barred by principles of res
judicata.
- 12 - 9cv351

Вам также может понравиться