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Transclean Corp. v. Jiffy Lube Int'l, Inc.

January 18, 2007

United States
Court of Appeals for the Federal Circuit

[1] Case No.: 06-1077

[2] Case Name:

TRANSCLEAN CORP. V. JIFFY LUBE INT'L, INC.

Michel, Bryson, Plager

[3] Date of Decision: January 18, 2007

[4] CLAIM PRECLUSION BARS PATENTEE FROM FILING SUIT AGAINST PURCHASERS OF AN INFRINGING PRODUCT WHEN IT SHOULD HAVE INCLUDED THEM IN EARLIER SUIT AGAINST MANUFACTURER OF INFRINGING PRODUCT. [6] Key Words:
Infringement, Procedural, Summary Judgment, Claim preclusion
[5] Patent No(s).: 5,138,080[7] Case Link:
http://fedcir.gov/opinions/06-1077.pdf
Procedural Background:
Summary of the Case:

Transclean appeals a grant of summary judgment in favor of defendant purchasers of an infringing product.

Patent

After winning a patent infringement suit against Bridgewood, the manufacturer of the infringing product, Transclean filed a separate suit against Jiffy Lube and other purchasers of the infringing machines. The district court granted summary judgment in favor of the defendants because under the doctrine of claim preclusion, Transclean could not bring a separate infringement action against Bridgewood’s customers. The district court also awarded Transclean damages against defendants who had not answered the complaint.

Earlier in the litigation, Transclean had argued that under the doctrine of full compensation, it could sue the defendants because it had not actually recovered on the judgment against Bridgewood, and further argued that the defendants could not raise a non-infringement defense because they were in privity with Bridgewood. The Court found, however, that claim preclusion barred Transclean from bringing the second suit because it should have brought infringement claims against the defendants in the first suit. Applying Eighth Circuit law to the claim preclusion issue, the court found that the main element of claim preclusion under dispute was privity, and the Court resolved this question in defendants’ favor because Transclean had previously stated that privity existed. The Court found that Transclean should be bound by that concession under the doctrine of judicial estoppel.

The Court sua sponte invoked the claim preclusion issue in favor of defendants who had not answered the initial complaint because Transclean’s admission of privity applied to them too. The Court affirmed the trial court’s summary judgment in favor of the participating defendants, and reversed in favor of the defaulting defendants.

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