Consent Judgment Precluding Future Infringement Does Not Preclude Subsequent Infringement Claim

The court deferred ruling on defendants' motion to dismiss plaintiff's infringement action based on a prior consent judgment and a parallel contempt proceeding. "In order to ensure an orderly and efficient resolution of the contempt proceeding and this patent infringement proceeding, this court finds it necessary for the parties to conduct discovery that addresses both the admitted violations of the Consent Judgment and any alleged patent infringement. . . . Defendants’ Motion to Dismiss in this case is based in large part on the preclusive effect of the Consent Judgment entered between [the parties] in [another] case. . . . This court does not find as a matter of law that the Consent Judgment requires dismissal of this patent infringement suit at this stage of these proceedings. . . . Defendants are correct that the Consent Judgment provides that 'Defendants and their affiliated companies shall not infringe U.S. Patent No. 5,618,945 . . . .' Thus, any infringement of the patent found in this case would also constitute a violation of the Consent Judgment entered in the previous case. However, this court does not find that this provision of the Consent Judgment makes it such that a motion for contempt is the only mechanism for prosecuting infringement of the patent by Defendants."

BASF Agro B.V., Arnhem (NL), Zurich Branch v. Makhteshim Agan of North America, Inc., et al, 1-13-cv-00422 (NCMD July 27, 2015, Order) (Osteen, J.)