Patent Term in Consent Decree is Res Judicata

In Chicago Brand Industrial, Inc. v. Mitutoyo Corp. (Fed. Cir., Februarey 2, 2005, not citable as precedent), the parties had agreed to a Consent Judgment and Decree that Chicago Brand infringed the '902 patent, that Chicago Brand was enjoined from further infringement during the term of the patent, and that the '902 patent expires on May 10, 2005. Three years later, Chicago Brand filed another complaint for declaratory judgment that the '902 patent had expired on December 13, 2000 as a result of the terminal disclaimer filed during prosecution of a parent application:

Chicago Brand argues that the court's reference to the May 10, 2005, date in the
Consent Judgment and Decree was dictum and that neither party could adjudicate
the expiration date of the '902 patent at the time the Consent Judgment and
Decree was entered. If the expiration date of the '902 patent was not an issue
that could have been litigated in the 1999 suit, Chicago Brand would be correct
in asserting that it cannot be issue precluded on an issue that was non-existent
in the earlier suit. In the Consent Judgment and Decree, the district court
found that Chicago Brand infringed the '902 patent and enjoined it from further
infringement for the remainder of the term of the patent. The court then
identified May 10, 2005, as the end of the '902 patent term and thus the end of
the injunction. Far from dictum, the court's identification of the expiration
date of the injunction was a necessary part of the agreed-to ruling. Indeed,
with the predicate judgment that the '902 patent is not invalid but was
infringed and that Chicago Brand is to be enjoined from further infringement,
the time assigned to the injunction is a live issue that Chicago Brand could
have litigated in the 1999 case. Instead, it chose to agree to an expiration
date for the patent, and therefore for the injunction—a date it now seeks to
avoid, but cannot because of res judicata. In sum, we hold that the principles of
res judicata require that Chicago Brand now live with its earlier agreement in
the Consent Judgment and Decree that the '902 patent expires on May 10, 2005.