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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 Imaged with the Permission of N.Y.U. Journal of International Law and Politics

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