IP Law Daily, PATENT—Fed. Cir.: Patent owner fails in attempt to re-litigate Breathe Right® infringement claims, (Oct 6, 2022)

By Patricia K. Ruiz, J.D.

The issues in the present case were the same as those in the patent owner’s previous litigation.

Issue preclusion prevented the owner of expired patents from re-litigating patent infringement claims, held the U.S. Court of Appeals for the Federal Circuit. The court found that all of the elements for issue preclusion set forth by the Third Circuit were met and that the patent owner had a full and fair opportunity to litigate his claims in the district court and the circuit court in his previous lawsuit (Glover v. Cohen ,October 5, 2022, per curiam).

Alleged infringement. The owner of expired utility and design patents U.S. Patent Nos. 5,466,456 (issued November 14, 1995) and D351,924 (issued October 25, 1994), which concern a facial cleanser and an ornamental design for a facial cleanser, respectively, alleges that this patent rights were infringed by a product called the Breathe Right® dilator, manufactured and sold by CNS, Inc. In 1995, the patent owner sued CNS in the U.S. District Court for the Northern District of Ohio for infringing his patents. The primary inventor of the Breathe Right® dilator and CNS maintained the patent owner had nothing to do with the invention of the device. The district court ultimately granted CNS’s motion for summary judgment and found no infringement. The patent owner appealed, and the instant court affirmed.

2019 lawsuit. In the current suit, brought in 2019, the patent owner again asserted that the Breathe Right® dilator infringes his patents, arguing he submitted his idea to American Idea Management Corporation (AIM) in 1987. He alleged AIM improperly conveyed his idea to Creative Integration & Design, Inc., (CID), which then improperly conveyed his idea to the primary inventor of the device. The patent owner sought to void the summary judgment ruling, reinstate his patents, and be provided an opportunity to demonstrate infringement in a jury trial. Individual defendants and CID filed three separate motions to dismiss, which the district court granted. The patent owner appealed.

Appeal; issue preclusion. On appeal, and reviewing the pro se litigant’s submissions liberally, the court found that the patent owner failed to state a claim upon which relief can be granted, as his suit is barred by issue preclusion. In the Third Circuit, the prerequisites for applying issue preclusion are: (1) the issue sought to be precluded is the same as that involved in the prior action; (2) the issue was actually litigated; (3) it was determined by a final and valid judgment; and (4) the determination was essential to the prior judgment. For defensive collateral estoppel to apply, the party to be precluded must have had a full and fair opportunity to litigate the issue in the first action.

The court found that all of the prerequisites are met. First, the same issue (whether the Breathe Right® dilator infringes the patents) was at issue in the prior action. Second, the issue was actually litigated, and the district court expressly determined there was no infringement. Third, the issue was determined by a final and valid judgment issued by the district court and affirmed by the circuit court. Fourth. The issue was necessary to the district court’s decision, and the court’s grant of summary judgment was premised on a finding of no infringement. Finally, the patent owner had a full and fair opportunity to litigate and, in fact, did litigate the issue of infringement in both the district court and the circuit court. Thus, the patent owner’s infringement claims are barred by the doctrine of issue preclusion.

The Case is No. 21-2126.

Attorneys: Morris S. Glover, pro se. Kurt John Niederluecke (Fredrikson & Byron, PA) for Daniel E. Cohen, Bruce C. Johnson and Creative Integration & Design, Inc.

Companies: Creative Integration & Design, Inc.

Cases: Patent FedCirNews