Vehicle Interface Technologies LLC v. Jaguar Land Rover North America LLC
MEMORANDUM OPINION re 8 MOTION to Dismiss. Signed by Judge Richard G. Andrews on 8/6/2014. (nms)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Civil Action No. 14-339-RGA
JAGUAR LAND ROVER NORTH
Brian E. Farnan, Esq., Farnan LLP, Wilmington, DE; Michael J. Farnan, Esq., Farnan LLP,
Wilmington, DE; Alexander C.D. Giza, Esq., Russ, August & Kabat, Los Angeles, CA, Attorneys
for the Plaintiff.
John W. Shaw, Esq. , Shaw Keller LLP, Wilmington, DE; Stephanie E. O'Byrne, Esq. , Shaw Keller
LLP, Wilmington, DE; Matthew J. Moore, Esq., Latham & Watkins, LLP, Washington D.C. ;
Clement J. Naples, Esq., Latham & Watkins, LLP, New York, NY; Lisa K. Nguyen, Esq. , Latham
& Watkins, LLP, Menlo Park, CA, Attorneys for the Defendant.
August i , 2014
Presently before the Court is Defendant Jaguar Land Rover North America, LLC 's Motion
to Dismiss Plaintiff Vehicle Interface Technologies, LLC's Complaint. (D.I. 8). This matter has
been fully briefed. (D.I. 9, D.I. 11 , D.I. 13). For the reasons that follow, the Defendant's Motion to
Dismiss is DENIED.
This dispute arises out of a previous lawsuit, asserted by the Plaintiff against the Defendant
and other parties not included in the present case, for infringement of the 6,842,677 Patent (the
'"677 Patent"). (D.I. 9 at 6). The Plaintiffs first lawsuit against the Defendant identified the Jaguar
XJ as the Defendant's allegedly infringing product. (Id.). Towards the end of the fact discovery
period, the Plaintiff served additional infringement contentions, alleging infringement of the '677
Patent by seven additional vehicle models. (Id.). The Defendant subsequently requested this Court
to preclude the Plaintiff from including the additional vehicles as accused products in the suit.
(Id.). This Court granted the Defendant' s request on March 14, 2014. (Id.). On the same day this
Court issued its order, the Plaintiff filed this lawsuit, which included the additional vehicle models
excluded from the first lawsuit. (Id.).
The Defendant has moved to dismiss this lawsuit. (D.I. 8). The Defendant argues that this
action is (1) barred by the doctrine of claim splitting and (2) is an impermissible collateral attack
on this Court's previous order excluding the newly alleged infringing products from the first
The doctrine of claim splitting bars plaintiffs from maintaining two separate causes of
action "involving the same subject matter at the same time in the same court against the same
defendant." Walton v. Eaton Corp., 563 F.2d 66, 70 (3d Cir. 1977). Claim splitting is a form of res
judicata. Leonard v. Sterntech Int 'l, Inc. , 2012 WL 3655512, at *4-5 (D. Del. August 24, 2012).
Accordingly, the bar against claim splitting requires the two claims to arise out of the same
transactional facts. Fujitsu Ltd. v. Tellabs Operations, Inc., 2013 WL 361810, at *2-5 (N.D. Ill.
January 30, 2013). In the context of patent infringement suits, this requires the accused products
in the two suits to be "essentially the same." Acurned LLC v. Stryker Corp. , 525 F.3d 1319, 1324
(Fed. Cir. 2008). "Accused devices are 'essentially the same ' where the differences between them
are merely 'colorable' or 'unrelated to the limitations in the claim of the patent."' Id. at 1324.
The Defendant previously relied on the differences between the accused products in
arguing its position in the initial suit. In its letter brief opposing the Plaintiffs amended patent
infringement contentions ("PIC"), the Defendant stated that the "newly accused displays operate
differently than the originally accused Jaguar XJ display." (C.A. No. 1: 12-cv-01285-RGA, DJ. 70
at 2). The Defendant further asserted that the newly identified products ''use an LCD panel, but
function differently than the XJ with respect to several critical claim limitations, including the
important 'unique and static' limitation." (Id.). Because of these functional differences, the
Defendant argued that allowing the Plaintiff to add new products at a late stage of discovery would
significantly prejudice it. (Id.).
The Defendant now relies on the similarities between the Plaintiffs description of the
products in the initial and present suit. (DJ. 9 at 17). The Defendant points out that the Plaintiff not
only described the products in exactly the same way, but also grouped the products together
indicating that they share the same features. (Id. ). Thus, the Defendant argues that based on the
Plaintiffs own admission, the products in the initial and present suits are "essentially the same."
(Id.) . However, the Defendant was and is in the best position to assess the similarities and
differences between the accused products in the previous and instant suits. This Court denied the
Plaintiffs attempt to amend its PICs because the Defendant argued that functional differences
between the previously accused product and the newly accused products would cause it undue
prejudice. The Defendant cannot have its cake and eat it too. The Court thus does not find the
doctrine of claim splitting to bar the current claim against the Defendant.
The Defendant also argues that the Plaintiffs current suit should be barred as it is an
impermissible collateral attack on this Court' s order precluding the Plaintiff from amending its
previous PICs. (D.I. 9 at 7, 13). In support of its position, the Defendant cites cases where the
courts ruled that it is "impermissible for a party to bring an action that would render a judicial order
in a prior suit meaningless." (D.I. 9 at 13). However, the Defendant's reliance on the cited cases is
misguided. My reading of these cases reveals factual differences that render them inapplicable to
the case at hand. The Court will address each of these cases in turn.
First, the Defendant cites Orion IP, LLC v. Home Depot USA, Inc. , 2005 U .S. Dist. LEXIS
45632, at *1 , 2 (E.D . Tex. Oct. 7, 2005). There, the District Court for the Eastern District of Texas
found that the plaintiff was engaging in an impermissible collateral attack on the court's previous
order. Id. The court had previously struck the plaintiffs amended PICs, with prejudice, reasoning
that allowing new theories of infringement at an advanced stage of the case would be unduly
prejudicial to the defendants. Id. The court also based its denial of the plaintiffs amended PI Cs on
the violation of the court' s patent rules, which stated that "an amendment of ... Final Infringement
Contentions . .. may be made only by order of the Court, which shall be entered only upon a
showing of good cause." (D.1. 13 , Ex. Cat 3). In finding the plaintiffs second action to be an
impermissible collateral attack on its prior order, the court cited Glitsch Inc. v. Koch Eng 'g Co.
216 F.3d 1382, 1386 (Fed. Cir. 2000). In Glitsch , the plaintiff attempted to file a declaratory
judgment asserting claims that it previously attempted to include in an amended answer in a
previous suit (where it was the defendant). Id. at 1386. The plaintiff's attempt to amend its answer
was previously denied by the district court because the issues raised had already been determined.
Id. at 1383.
The Glitsch court dealt with a single patent infringement case where the plaintiff,
disgruntled with the court's decision regarding its claim, attempted to reverse a district court ruling
by filing a new action. Id. This is different from the instant case. Here, the Plaintiff was precluded
from expanding its patent infringement contentions because it would have been unfairly
prejudicial to the Defendant to do so. This Court' s previous order was not any sort of judgment on
the merits, and thus no reversal would occur from the Plaintiff filing a second claim. For this
reason, Glitsch does not provide assistance to the Defendant in this case. Similarly, in Orion IP,
the court had precluded the plaintiff from amending its PICs, with prejudice. 2005 U.S. Dist.
LEXIS 45632, at *1 , 2. However, Orion IP appears to have dealt with two lawsuits involving the
same products. Id. Because this case deals with different products, Orion IP is not applicable, and
a ruling that would allow the Plaintiff to continue this lawsuit would not be inconsistent with this
Court' s previous order.
The Defendant' s reliance on Icon-IP Pty Ltd. v. Specialized Bicy cle Components, Inc. , No.
13-cv-03677-JST, slip op. at 3 (N.D. Cal. Oct. 22, 2013) is equally unconvincing. As the Plaintiff
correctly points out, the Icon court found that the plaintiffs second claim would force the court to
consolidate the two actions. Id. at 3. The court argued this would have the effect of negating its
prior order excluding the alleged products in the second claim from the first claim. The
significance of the Icon court' s holding is the nullifying effect that the second claim would have
had on its previous order. Here, this Court does not find that the filing of a second action, alleging
similar patent infringement against different products, requires consolidation of the two actions.
Accordingly, there would be no negating effect resulting from the Plaintiff filing a second claim. 1
The Court' s previous order precluding the Plaintiff from amending its PI Cs was applicable
to that case only. The cases cited by the Defendant involve situations where the second action
would have the effect ofreversing the court's decision in previous cases. This is not the case here.
It therefore follows that this Court does not find the Plaintiff's current action to be an
impermissible collateral attack.
For the reasons discussed above, the Defendant' s Motion to Dismiss is DENIED. (D.I. 8).
A separate order will be entered.
I do not anticipate the Plaintiff moving to join the two cases.
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