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District Judge Brian M. Cogan

 

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Plaintiff moved for judgment on the pleadings as to defendant’s affirmative defense of patent misuse. Plaintiff’s complaint asserted breach of contract with underlying patent infringement issues. The parties had settled prior patent litigation filed by plaintiff with a settlement and license agreement, under which defendant would pay royalties for infringing products. At issue in the present case was a new product manufactured by defendant that plaintiff alleged fell under its patents and thus, required payment of royalties. In support of its motion, plaintiff argued that the parties’ settlement precluded defendant from asserting its patent misuse defense, or alternatively, that res judicata barred assertion of the defense. The court rejected both of plaintiff’s arguments and denied its motion. The court first ruled that the parties’ agreement only barred future claims and noted that a defense was not a “claim.” The court held that if plaintiff wanted to release affirmative defenses, the agreement should have explicitly stated so. The court further ruled that res judicata did not bar defendant’s patent misuse defense because the claim plaintiff asserted in the present action was different from the one it asserted in the prior litigation.