Member Article

In our Case of the Week, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the duplicative litigation doctrine.

Arendi sued LG for patent infringement, claiming that hundreds of LG products, including LG’s Rebel 4 camera, infringed Arendi’s patent. Under Delaware’s discovery rules, Arendi was required to produce an initial claims chart for each accused product. However, despite multiple opportunities to remedy its deficiency, Arendi only submitted a claims chart for LG’s Rebel 4. When Arendi provided its expert report, the district court granted LG’s motion to strike portions of the report relating to non-Rebel 4 products. The district court agreed with LG that, by not providing initial claims charts for any non-Rebel 4 products, Arendi failed to timely disclose its infringement contentions as to any non-Rebel 4 products. Arendi still did not supplement with more claims charts, and instead filed a second lawsuit, also against LG and also in the District of Delaware, asserting that LG’s non-Rebel 4 products infringed the same asserted patent. The district court granted LG’s motion to dismiss the second lawsuit as duplicative, Arendi appealed, and the Federal Circuit reviewed for abuse of discretion.

The duplicative litigation doctrine prevents plaintiffs from maintaining two separate actions, at the same time and in the same court, if they are against the same defendant and involve the same subject matter. In this case, the only question was whether the two actions involved the same subject matter, which itself contains two questions: (1) whether the same patents are involved; and (2) whether the same products are involved. Arendi argued that in granting the motion to strike portions of Arendi’s expert report pertaining to non-Rebel 4 products, the district court had held that without claims charts the non-Rebel 4 products were not sufficiently accused and effectively not at issue in the first lawsuit. Therefore, Arendi argued, the second lawsuit pertaining to the non-Rebel 4 products involved different products than the first. The Federal Circuit did not give Arendi’s argument much weight. First, the district court’s holding was not that Arendi failed to sufficiently accuse the non-Rebel 4 products. Instead, the district court’s holding was that because Arendi failed to fulfill its discovery obligations, Arendi’s infringement allegations in its expert report were untimely. And second, it was simply impossible to believe that non-Rebel 4 products were never at issue in the first lawsuit; Arendi had listed non-Rebel 4 products in other discovery disclosures, Arendi served interrogatories regarding non-Rebel 4 products, the parties agreed on seven non-Rebel 4 products as representative products, and, of course, Arendi included non-Rebel 4 products in its expert report.

In the end, the Federal Circuit called it a “simple and obvious fact” that the non-Rebel 4 products in the second lawsuit were identical to those in the first, and affirmed the district court’s application of the duplicative litigation doctrine.

The opinion can be found here.

By Tyler Hall

ALSO THIS WEEK

Hyatt v. U.S. Patent and Trademark Office, Appeal No. 2021-2324 (Fed. Cir. Sept. 8, 2022)

In an appeal from a district court action that found the USPTO had properly issued a restriction requirement during continuing patent prosecution, the Federal Circuit affirmed. Prolific patent applicant Gilbert Hyatt had applied for the patents at issue decades ago—the earliest priority date asserted was in 1983. In 1995, Congress passed the Uruguay Round Agreements Act, which changed patent terms from being triggered upon issuance, to being triggered based on the priority date of the application. Hyatt’s claims were subject to prosecution for decades. In August 2015, he submitted significant claim amendments. The examiner issued a restriction requirement for several claims. This was significant because Hyatt would have been required to file new applications to pursue the additional claims and those applications would not have been grandfathered into the patent terms applicable to pre-1995 patents. Hyatt sued the Patent Office in district court, arguing that the restriction requirement was improper. The district court found the restriction requirement complied with Patent Office Rule 129—a rule that was promulgated to address pre-1995 applications. The Federal Circuit affirmed that Rule 129 applied because the restriction requirement was the result of Hyatt’s actions—it was the result of his substantial revisions to the pending claims.

For more on Hyatt and his continuing saga to pursue his pre-1995 patent applications, see our write up here.

The opinion can be found here.

By Nika Aldrich

Check out our searchable library of all Fresh from the Bench updates.

This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.