Federal Circuit Affirms Duplicative-Litigation Doctrine
On September 7, 2022, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed a district court dismissal under the duplicative-litigation doctrine. Under the duplicative-litigation doctrine, plaintiffs cannot “maintain two separate actions involving the same subject matter at the same time in the same court … against the same defendant.” Arendi S.A.R.L. v. LG Elecs. Inc., No. 2021-1967, 2022 BL 313997 (Fed. Cir. Sept. 7, 2022).
The dispute began in 2013, when Arendi first asserted its patent claims against LG in the District Court for the District of Delaware (“Arendi I”). Among the various discovery requirements in the District of Delaware, Arendi was required to identify the accused products and asserted patents and, once LG provided initial discovery on those accused products, produce “an initial claim chart relating each accused product to the asserted claims each product allegedly infringes.” Arendi accused hundreds of LG products but provided claim charts for only a single accused product, LG’s Rebel 4 phone.
LG asserted in Arendi I that the disclosure of claim charts for only a single product was insufficient with respect to the non-charted accused products, and that Arendi must provide claim charts for the other accused products (or properly explain why the Rebel 4 charts were representative). But Arendi did not supplement its disclosure or provide charts for the other accused products.
After the close of fact discovery in Arendi I, Arendi served an expert report, and LG moved to strike portions of that report that allegedly “disclose—for the first time—infringement contentions for” several of the non-Rebel 4 accused products. The district court granted the motion, finding that Arendi failed to timely disclose its contentions, and thus “failed to fulfill its discovery obligations.”
Arendi then filed a second suit in the District of Delaware a few weeks later (“Arendi II”), asserting the same patent against the same non-Rebel 4 products from Arendi I. The district court granted LG’s motion in Arendi II to dismiss that second filed case as duplicative, on the grounds that all of the accused products in Arendi II had been accused in Arendi I.
On appeal of Arendi II, Arendi argued that, because the district court granted LG’s motion to strike in Arendi I, the non-Rebel 4 products in question were not sufficiently accused in Arendi I, and therefore not litigated. The CAFC disagreed, noting that the district court granted LG’s motion to strike because Arendi failed to timely fulfill its discovery obligations. Ultimately, the CAFC agreed with the district court’s straightforward analysis: the patents were the same, the accused products were the same, and therefore the duplicative-litigation doctrine applied.