Arendi S.A.R.L. v. Lg Electronics Inc.

Case: 21-1967 Document: 59 Page: 1 Filed: 09/07/2022
United States Court of Appeals
for the Federal Circuit
______________________
ARENDI S.A.R.L.,
Plaintiff-Appellant
v.
LG ELECTRONICS INC., LG ELECTRONICS USA,
INC.,
Defendants-Appellees
______________________
2021-1967
______________________
Appeal from the United States District Court for the
District of Delaware in No. 1:20-cv-01483-LPS, Judge
Leonard P. Stark.
______________________
Decided: September 7, 2022
______________________
KEMPER DIEHL, Susman Godfrey LLP, Seattle, WA, ar-
gued for plaintiff-appellant. Also represented by SETH
ARD, MAX ISAAC STRAUS, New York, NY; JOHN PIERRE
LAHAD, Houston, TX; KALPANA SRINIVASAN, Los Angeles,
CA.
ROBERT ANDREW SCHWENTKER, Fish & Richardson
P.C., Washington, DC, argued for defendants-appellees.
Also represented by STEVEN KATZ, Boston, MA.
______________________
Case: 21-1967 Document: 59 Page: 2 Filed: 09/07/2022
2 ARENDI S.A.R.L. v. LG ELECTRONICS INC.
Before PROST, CHEN, and STOLL, Circuit Judges.
PROST, Circuit Judge.
Arendi S.A.R.L. (“Arendi”) alleged that various LG
Electronics Inc. and LG Electronics USA, Inc. (collectively
“LG”) products infringed its U.S. Patent No. 7,917,843(“the ’843 patent”). First Am. Compl., Arendi S.A.R.L. v.
LG Elecs. Inc. (“Arendi I”), No. 1:12-cv-01595 (D. Del.
Oct. 3, 2013), ECF No. 34; see also J.A. 144–57 (original
complaint). After the district court struck part of Arendi’s
infringement expert report as beyond the scope of Arendi’s
infringement contentions, Arendi filed a second patent-in-
fringement suit against LG in the same court, again assert-
ing the ’843 patent. Compl. for Patent Infringement,
Arendi S.A.R.L. v. LG Elecs. Inc. (“Arendi II”), No. 1:20-cv-
01483 (D. Del. Nov. 3, 2020), ECF No. 1; J.A. 1583–91.
The district court granted LG’s motion to dismiss the Ar-
endi II complaint under the duplicative-litigation doctrine,
determining that in both cases the same products were ac-
cused of infringing the same patent. Arendi appeals from
the dismissal. We affirm.
BACKGROUND
In Arendi I, Arendi sued LG (among others) in the U.S.
District Court for the District of Delaware for infringing
various Arendi patents. The District of Delaware, Arendi’s
chosen forum, has specific rules governing initial discovery
in patent cases. Section 4(a) of those rules required Arendi
to “specifically identify the accused products and the as-
serted patent(s) they allegedly infringe.” D. Del. Default
Standard for Discovery § 4(a) (cleaned up). Then, under
Section 4(c), Arendi had to “produce . . . an initial claim
chart relating each accused product to the asserted claims
each product allegedly infringes” after LG provided initial
discovery on those products. Id. § 4(c) (emphasis added);
see id. § 4(b). As explicitly outlined in the same local rules,
“these disclosures are ‘initial,’ [and] each party shall be
permitted to supplement.” Id. § 4 n.3.
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ARENDI S.A.R.L. v. LG ELECTRONICS INC. 3
Arendi filed its Section 4(a) Disclosure in Novem-
ber 2018 and listed hundreds of LG products as infringing
four claims of the ’843 patent. J.A. 1121–37 (Section 4(a)
Disclosure). Despite this lengthy 4(a) Disclosure and Sec-
tion 4(c)’s instruction that Arendi “relat[e] each accused
product to the asserted claims,” Arendi’s Section 4(c) Dis-
closure provided claim charts for only one of those prod-
ucts—LG’s Rebel 4 phone. These charts labeled the
Rebel 4 as “exemplary.” J.A. 1167–262 (Section 4(c) Disclo-
sure).
In April 2019, two months after Arendi filed its Sec-
tion 4(c) Disclosure, LG sent a letter to Arendi stating that
the singular-product claim charts for the ’843 patent were
insufficient under Section 4(c) and thus “LG underst[ood]
Arendi’s infringement contentions [for the ’843 patent] to
be limited to” the Rebel 4. J.A. 1469. LG remarked that,
“[s]hould Arendi intend to accuse [non-Rebel 4] products,
then Arendi must promptly provide claim charts demon-
strating how these products infringe[] or explain why Ar-
endi contends the current claim charts are representative
of specific non-charted products.” J.A. 1469. Arendi did
not respond to this letter or move to supplement its Sec-
tion 4(c) Disclosure.
As the litigation proceeded, Arendi and LG agreed on
eight representative products to represent all accused
products. Seven of the eight were non-Rebel 4 products.
LG provided additional discovery on all eight representa-
tive products, and Arendi still did not move to supplement
its Section 4(c) Disclosure. So in October 2019, in response
to an interrogatory relating to those eight products, LG re-
iterated its “position that Arendi has only provided in-
fringement contentions for [the Rebel 4]. . . . Arendi bears
the burden to prove infringement and, if it so desires, to try
to prove that” the Rebel 4 “is representative of one or more”
of the non-Rebel 4 products. J.A. 1476. Without such a
showing, LG continued, “Arendi has not provided suffi-
ciently detailed contentions to know . . . its allegations of
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4 ARENDI S.A.R.L. v. LG ELECTRONICS INC.
infringement” for the ’843 patent. J.A. 1476–77. Still, Ar-
endi did not move to supplement its Section 4(c) Disclosure.
Arendi provided its expert report in August 2020 after
the close of fact discovery in December 2019. LG moved to
strike portions of that report because it allegedly “dis-
closed—for the first time—infringement contentions for
five of” the seven non-Rebel 4 representative products.
J.A. 191 (emphasis omitted); see Arendi I, ECF No. 201.
The district court orally granted that motion in Octo-
ber 2020 under applicable Third Circuit law. The court de-
termined that Arendi did not timely disclose these
infringement contentions having “failed to fulfill its discov-
ery obligations.” J.A. 1576–77 (citing Meyers v. Pennypack
Woods Home Ownership Ass’n, 559 F.2d 894 (3d Cir.
1977)). In the court’s analysis, it repeated LG’s assertion
that “LG understood Arendi was accusing only the Rebel 4”
of infringing the asserted ’843 patent claims, J.A. 1577,
since Arendi repeatedly failed to update its infringement
contentions in the face of LG’s April 2019 letter and Octo-
ber 2019 interrogatory response. Arendi still took no action
to supplement its Section 4(c) Disclosure.
Instead, Arendi filed its Arendi II complaint in Novem-
ber 2020 in the District of Delaware. This complaint also
asserted that LG’s non-Rebel 4 products infringed the ’843
patent. LG moved to dismiss the complaint as duplicative
since all of the non-Rebel 4 products accused in Arendi II
were also accused in Arendi I. The district court granted
that motion without prejudice via an oral order in
April 2021, J.A. 3, 50–64, and Arendi appealed on May 18,
2021.
That same day, Arendi finally moved to supplement its
Section 4(c) Disclosure in Arendi I. In March 2022, the dis-
trict court denied that motion and a pending LG motion for
summary judgment of noninfringement of the non-Rebel 4
products without prejudice “[i]n view of the potential im-
pact of [this] pending appeal.” Arendi I, ECF No. 354. The
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ARENDI S.A.R.L. v. LG ELECTRONICS INC. 5
court also noted that the motions were subject to renewal
after a decision in this appeal. Id.We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I
For a “procedural question that is not unique to [our]
exclusive jurisdiction,” this court applies and gives “defer-
ence for regional circuit law on a concern for ‘consistency of
future trial management.’” Eolas Techs., Inc. v. Microsoft
Corp., 457 F.3d 1279, 1282 (Fed. Cir. 2006) (quoting Biodex
Corp. v. Loredan Biomedical, Inc., 946 F.2d 850, 857–58
(Fed. Cir. 1991)). Under the circumstances of this case, the
question of dismissing the Arendi II complaint as duplica-
tive of the Arendi I complaint involves a procedural issue:
a district court’s power to dismiss a case as duplicative is
“part of [a district court’s] general power to administer its
docket,” Fabics v. City of New Brunswick, 629 F. App’x 196,
198 (3d Cir. 2015) (nonprecedential), that supports “wise
judicial administration,” Serline v. Arthur Andersen & Co.,
3 F.3d 221, 223 (7th Cir. 1993), and “conservation of re-
sources,” Adam v. Jacobs, 950 F.2d 89, 92 (2d Cir. 1991).
We, therefore, apply the Third Circuit’s standard of review-
ing dismissals of duplicative complaints for abuse of discre-
tion. See Jenn-Ching Luo v. Owen J. Roberts Sch. Dist.,
737 F. App’x 111, 115 n.4 (3d Cir. 2018) (nonprecedential);
Fabics, 629 F. App’x at 198; Schneider v. United States,
301 F. App’x 187, 190 (3d Cir. 2008) (nonprecedential). A
district court abuses its discretion when it reaches an er-
rant conclusion of law, improperly applies law to fact, or
makes a clearly erroneous finding of fact. Weitzner v.
Sanofi Pasteur Inc., 909 F.3d 604, 613 (3d Cir. 2018).
The duplicative-litigation doctrine prevents plaintiffs
from “maintain[ing] two separate actions involving the
same subject matter at the same time in the same court . . .
against the same defendant.” Walton v. Eaton Corp.,
Case: 21-1967 Document: 59 Page: 6 Filed: 09/07/2022
6 ARENDI S.A.R.L. v. LG ELECTRONICS INC.
563 F.2d 66, 70 (3d Cir. 1977) (en banc). Whether the Ar-
endi I and Arendi II patent-infringement complaints in-
volve the same subject matter is determined under Federal
Circuit law. Senju Pharm. Co. v. Apotex Inc., 746 F.3d
1344, 1348 (Fed. Cir. 2014). 1 “[A] cause of action is defined
by the transactional facts from which it arises[] and the ex-
tent of the factual overlap.” Id. at 1349. There are two
primary “areas of factual overlap” to consider in this anal-
ysis: (1) “the overlap of the product[s] . . . accused in the in-
stant action with the product[s] . . . accused in the prior
action”; and (2) the overlap of the patents in both suits. Id.1 Senju Pharmaceutical involved an issue of claim
preclusion—also known as res judicata—a doctrine that
precludes later “repetitious suits involving the same cause
of action” after a prior suit has reached a final judgment.
Senju Pharm., 746 F.3d at 1348 (quoting C.I.R. v. Sunnen,
333 U.S. 591, 597 (1948)). The duplicative-litigation doc-
trine does not require a final judgment to bar a later com-
plaint, but it does involve a similar inquiry in that it also
looks to whether the later complaint is, essentially, repeti-
tious. See Adams v. Cal. Dep’t of Health Servs., 487 F.3d
684, 688–89 (9th Cir. 2007) (“To determine whether a suit
is duplicative, we borrow from the test for claim preclu-
sion.”); Hartsel Springs Ranch of Colo., Inc. v. Bluegreen
Corp., 296 F.3d 982, 987 n.1 (10th Cir. 2002) (“[I]n the [du-
plicative-litigation] context, the appropriate inquiry is
whether, assuming that the first suit were already final,
the second suit could be precluded pursuant to claim pre-
clusion.”).
Given the particular facts of this case, though, we also
recognize an argument can be made that whether the Ar-
endi II complaint is duplicative of the Arendi I complaint
concerns an understanding of the case’s procedural history
and the application of local rules rather than an issue pe-
culiar to patent law. But we need not explore this further
because the result would be the same either way.
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ARENDI S.A.R.L. v. LG ELECTRONICS INC. 7
(emphasis omitted). The only issue in this appeal is
whether the district court properly applied that law to the
facts of this case.
II
The district court determined that Arendi II was “im-
properly duplicative of Arendi I.” J.A. 50–51 (italics added)
(citing Walton, 563 F.2d at 70). As the district court ex-
plained, under applicable Federal Circuit law, cases in-
volve the same subject matter “where the same patent is
asserted and the accused products are at least essentially
the same or identical.” J.A. 51–52 (citing Senju Pharm.,
746 F.3d at 1348). The district court reasoned that, since
“[i]t’s undisputed that . . . the same products . . . are al-
leged to infringe the same patent” in both cases, “here,
we’re in the identical[-product] situation.” J.A. 51–52.
Arendi challenges the district court’s determination
that Arendi I and Arendi II involve the same subject mat-
ter. Arendi does not contest that it asserts the same patent
in Arendi I and Arendi II, nor could it. Arendi does, how-
ever, dispute that the products it accused in Arendi II are
“identical” to products it accused in Arendi I.
Arendi tries to argue that the products accused in Ar-
endi I and Arendi II are not identical because there is no
overlap between the accused products. Arendi asserts that
this lack of overlap is a consequence of the district court’s
grant of LG’s motion to strike parts of Arendi’s expert re-
port in Arendi I. According to Arendi, the district court de-
termined that Arendi had not sufficiently disclosed its
intent to accuse the non-Rebel 4 products in Arendi I such
that those products were effectively not at issue. See Oral
Arg. at 2:13–3:40 (citing J.A. 1576–77). 2 And under this
logic, Arendi maintains, there is no accused-product
2 No. 21-1967, https://oralarguments.cafc.uscourts.g
ov/default.aspx?fl=21-1967_08012022.mp3.
Case: 21-1967 Document: 59 Page: 8 Filed: 09/07/2022
8 ARENDI S.A.R.L. v. LG ELECTRONICS INC.
overlap: the non-Rebel 4 products accused in Arendi II can-
not be identical to products accused in Arendi I because Ar-
endi I involves only LG’s Rebel 4 phone. See Appellant’s
Br. 21–22, 27.
But Arendi misunderstands (if not misrepresents) the
district court’s Arendi I order. As the district court ex-
plained when dismissing the Arendi II complaint, although
Arendi insists the district court “ruled” that the non-Re-
bel 4 products “had not been accused in Arendi I,” “[t]hat is
not correct.” J.A. 54 (italics added). The court did not grant
LG’s motion to strike parts of Arendi’s infringement expert
report because Arendi failed to sufficiently accuse the non-
Rebel 4 products. The court granted the motion to strike
because Arendi “failed to fulfill its discovery obligations”
with respect to those products, so Arendi’s infringement al-
legations in its expert report were procedurally untimely.
J.A. 1576–77.
And it’s hard to find any basis whatsoever for Arendi’s
assertion that the non-Rebel 4 products were never “at is-
sue” or “litigated” in Arendi I. Appellant’s Br. 22, 25. Ar-
endi listed the non-Rebel 4 products in its Section 4(a)
Disclosure, served interrogatories about the non-Rebel 4
products after the parties agreed to seven non-Rebel 4 rep-
resentative products, received discovery related to those
products, and included non-Rebel 4 products in its expert
report. See Oral Arg. 7:02–50 (Arendi admitting that it
considered all products to be at issue when it served its ex-
pert report). Indeed, those non-Rebel 4 products are the
focus of Arendi and LG’s renewable motions in Arendi I.
Under these circumstances, it is apparent that the non-Re-
bel 4 products were “at issue” or “litigated” in Arendi I.
So what’s left? It is Arendi’s argument that the non-
Rebel 4 products are “materially different” than the Re-
bel 4. Appellant’s Br. 21–22. But again, this argument
fails because it does not pertain to the question at issue in
this appeal: comparing the Rebel 4 with non-Rebel 4
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ARENDI S.A.R.L. v. LG ELECTRONICS INC. 9
products says nothing about the overlap between the non-
Rebel 4 products accused in Arendi I and the non-Rebel 4
products accused in Arendi II. And it is this latter compar-
ison that governs whether the Arendi II complaint is dupli-
cative. 3 Senju Pharm., 746 F.3d at 1349.
Left with the simple and obvious fact that the non-Re-
bel 4 products accused in Arendi II are identical to products
accused in Arendi I, we determine that the district court
did not err in dismissing the Arendi II complaint as im-
properly duplicative.
CONCLUSION
We have considered Arendi’s remaining arguments but
find them unpersuasive. For the foregoing reasons, we af-
firm the district court’s dismissal of the complaint.
AFFIRMED
3 At oral argument, Arendi requested that this court
at least opine on the former comparison to “give guidance
to the district court” in Arendi I. Oral Arg. at 31:58–32:55.
We consider this request unusual, to say the least, and un-
surprisingly decline to comment on issues outside of this
appeal.