Claim Preclusion Bars Second Lawsuit Asserting Newly Issued Reexamination Claims Against Previously Accused Products

The court granted defendants' motion to dismiss plaintiffs' infringement action based on claim preclusion because newly issued claims from reexamination of the patent-in-suit did not create a new cause of action against the previously sued defendants and previously accused products. "Plaintiffs argue in this regard that they could not have asserted new reexamined claims 12-16 and amended claim 6 of the [patent-in-suit] in the first litigation because the claims were not in existence at the time. While literally true, plaintiffs' argument is flawed because they could have asserted the equivalent of the new and amended claims in the first litigation. In other words, plaintiffs were free to construe the patent more narrowly than they did. . . . The cases that plaintiffs rely on . . . are inapplicable because of the difference between reissue and reexamination."

Senju Pharmaceutical Co. Ltd., et. al. v. Apotex Inc., et. al., 1-11-cv-01171 (DED September 17, 2012, Order) (Robinson, J.).