April 5, 2016

Invalidity Determination Would Not Apply to Reexamination Claims That Did not Exist at Time of Judgment

By Bryan K. Wheelock, Principal

In Cardpool, Inc. v. Plastic Jungle, Inc., [2014-1562] (April 5, 2016) the Federal Circuit affirmed the district court’s denial of vacatur, because the denial was within the district court’s discretion and also because the premise of the motion was both speculative and inaccurate.

The parties’ jointly requested vacatur was that all of the Cardpool patent claims had been replaced on reexamination, and that Plastic Jungle was no longer conducting the accused infringing activities.

The Federal Circuit, applying Ninth Circuit law, said that a district court’s denial of a Rule 60(b) motion is reviewed for abuse of discretion, and found that it was not an abuse of discretion to preserve its original decision, which was limited to the claims and grounds that existed at the time.  The Federal Circuit further found that the premise of the motion was both speculative and inaccurate: the district court’s final judgment as to an original group of claims does not automatically render that judgment res judicata as to new claims granted upon reexamination.  The Federal Circuit distinguished Aspex, noting that for res judicata to apply, it is necessary that the claim either was asserted, or could have been asserted, in the prior action. If the claim did not exist at the time of the earlier action, it could not have been asserted in that action and is not barred by res judicata.  A prior judgment cannot be given the effect of extinguishing claims which
did not even then exist and which could not possibly have been sued upon in the previous case.  The Federal Circuit said that the issue of validity of the reexamined claims remains to be addressed in any future proceeding, and found that the district court did not abuse its discretion refusing to vacate the judgment as to the original claims.