A unanimous Federal Circuit panel affirmed a district court ruling of non-infringement for Finnegan client Trex, in Nystrom v. Trex. Trex has the questionable distinction of having made new law, not once but twice, in the course of Nystrom’s running feud, in which Trex prevailed in three judgments in the Eastern District of Virginia and in three subsequent appeals to the Federal Circuit. In its first groundbreaking holding, Trex successfully sought rehearing by the Federal Circuit, which vacated an initial 2004 panel decision reversing the district court’s non-infringement judgment, and issued a new decision following the Phillips decision and holding that the claims must be construed consistent with the specification. Trex broke new ground again in 2009 when the Federal Circuit affirmed another judgment of non-infringement. Trex had argued that the earlier decisions controlled, yet, the district court declined to give them res judicata effect. The district court ultimately ruled in Trex’s favor on other grounds. The Federal Circuit now holds that res judicata applies with respect to claim limitations that are the basis for a non-infringement judgment, even if the product is allegedly changed with respect to other claim limitations. Nystrom is prohibited from proceeding against Trex for any product that does not include the claim limitations that were the basis for the earlier non-infringement judgments, even under the doctrine of equivalents.

Nystrom v. Trex Company, Inc., 09-1026, Fed. Cir., Michel, Prost, Rader

Nystrom v. Trex Company, Inc., 2:06-cv-00569, E.D. Va., Davis, Kelley, Stillman