No preclusion for subsequent infringement action…

Following Federal Circuit precedent, Chief Judge G. Sleet recently found that non-merits based dismissal of a patent claim in one action does not preclude the plaintiff from bringing that same claim in a subsequent infringement action. Abbott Diabetes Care, Inc. v. Dexcom, Inc., C.A. No. 06-514-GMS (D. Del. Sept. 30, 2007). Abbott previously filed an amended complaint in an earlier action between the same parties looking to add three more patents to that lawsuit. Dexcom filed, and the Court granted, a motion to strike this amended complaint for failure to comply with the requirements of Fed. R. Civ. P. 15(d). Abbott then brought a new action alleging infringement of those three patents and Dexcom again moved to strike. The Court found that because its earlier decision did not reach the merits of those patent claims each of those patent claims now raises a distinct cause of action and therefore is not duplicative of the complaint in the earlier action. Id. at 6. The Court did, however, consolidate this new case with the earlier filed litigation as the technologies at issue in each case are similar, the same device is accused of infringement in both cases and Abbott admitted in papers filed in the earlier litigation that any new case would likely be consolidated with the prior litigation. Finally, the Court agreed to stay the case pending reexamination of all patents-in-suit (including the ones in the prior litigation) where the Rule 16 scheduling conference had not yet occurred, no scheduling order was in place and no discovery had begun. The stay would further simplify issues for trial. Id. at 8-9.

Of particular note regarding the local rules… Both parties filed additional letters after complete briefing on the pending motions. The Court disregarded these letters in making its ruling as failing to comply with D. Del. LR 7.1.2(b) which only allows the filing of additional papers where there is a need to cite subsequent authorities. Id. at 2 n.1.

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