27 N.Y.U. J. Int'l L. & Pol. 469 (1994-1995)
The Preclusive Effect of Foreign Country Patent Judgments in the United States

handle is hein.journals/nyuilp27 and id is 479 raw text is: THE PRECLUSIVE EFFECT OF FOREIGN COUNTRY
PATENT JUDGMENTS IN THE UNITED STATES
DAVID R. MARSH*
INTRODUCTION
Courts have applied and commentators have suggested
using the doctrine of issue preclusion to resolve issues raised
during U.S. patent suits when similar issues were decided in a
foreign forum involving a counterpart patent.' This Note dis-
cusses the policies behind patent law and issue preclusion and
concludes that precluding issues during U.S. patent suits
based on the determination of similar issues in the litigation of
related foreign patents does not serve these policies.
When an action arising between two parties terminates in
a valid judgment, a later action may be affected even if it in-
volves a different claim or cause of action.2 If the actions are
on different claims, the former judgment operates to stop re-
litigation of issues or points controverted in that forum that
were necessary to the judgment rendered by the first forum.3
The bar against relitigating issues that were litigated in a prior
action and were necessary for that judgment was formerly
called collateral estoppel but is now referred to as issue preclu-
sion.4
* The author is associated with the law firm of Howrey & Simon, Wash-
ington, D.C. The author would like to thank Professors Rochelle Dreyfuss,
Andreas Lowenfeld, and Linda Silberman (New York University School of
Law); Ginger Dreger and Stephen Raines (Genentech, San Francisco); Nigel
Jones (Linidaters and Paines, London, U.K.); Joseph Hosteny (Niro, Sca-
vone, Hailer and Niro, Chicago); John Wyss (Wfiley, Rein and Fielding,
Washington, D.C.); and Tim Boudreau (NewYork University School of Law,
J.D. 1995) for their insights, observations, or materials. All views expressed
or errors within the Note are wholly those of the author.
1. Vas-Cath Inc. v. Mahurkar, 745 F. Supp. 517, 527 (NJD. m. 1990),
rev'd on other grounds, 935 F.2d 1555 (Fed. Cir. 1991);James P. Muraff, Note,
Issue Predusion-Recognizing Foreign Judgments in United States Patent Infiing-
ment A New Approach, 26J. MARsLA. L. REv. 627, 668 (1993).
2. See, ag., F  uNoJAMEs,JL Er At., CvA. PROCEDURE, sec. 11.17 (4th
ed. 1992).
3. See, ag., Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979).
4. SeeJANiEs E AT., supra note 2; Steven C. Malin, Comment, Collateral
Estappel The Fairness Exception, 53J. Am L & CoMt. 959, 962 (1988); Michael
469

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