ENDOTACH LLC v. COOK MEDICAL LLC
Filing
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ORDER denying 12 Motion to Dismiss. Signed by Judge Larry J. McKinney on 8/22/2013. (CBU)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
ENDOTACH LLC,
Plaintiff,
vs.
COOK MEDICAL INCORPORATED,
Defendant.
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No. 1:13-cv-01135-LJM-DKL
ORDER ON MOTION TO DISMISS
This cause is before the Court on Defendant Cook Medical Incorporated’s
(“Cook’s”) Motion to Dismiss Duplicative Lawsuit. Plaintiff Endotach LLC opposes the
motion.
For the reasons discussed herein, the Court DENIES Cook’s Motion to
Dismiss.
I. BACKGROUND
The basic facts of this matter are undisputed: On June 21, 2012, Endotach filed
suit against Cook in the Northern District of Florida, alleging that certain Cook products
infringed two patents, U.S. Patent Nos. 5,122,154 and 5,593,417 (collectively, the
“Rhodes patents”), in which Endotach alleged to have an exclusive license.
See
Endotach LLC v. Cook Med. Inc., Cause No. 1:12-cv-01630-LJM-DKL, Dkt. No. 1
(“Endotach I”). On November 8, 2012, the Florida court transferred the action to this
Court. See id., Dkt. No. 51.
After considerable litigation and discovery, on June 28, 2013, Cook moved to
dismiss Endotach I for lack of subject matter jurisdiction because Endotach lacked
standing to bring the suit. See id. Dkt. No. 124. On July 16, 2013, Endotach opposed
Cook’s Motion to Dismiss. Id. Dkt. No. 141.
Also on July 16, 2013, Endotach filed the present lawsuit (“Endotach II”), in “an
abundance of caution” and “[i]n the event the Court were to determine that the 2009
exclusive license was insufficient to transfer to Acacia (and consequently Plaintiff) all
substantial rights to the [Rhodes patents] . . . .”
Endotach II, Dkt. No. 1, ¶ 13.
Otherwise, the new Complaint in Endotach II is substantially identical to the original
Complaint in Endotach I.1 Compare Endotach I, Dkt. No. 1, to Endotach II, Dkt. No. 1.
On July 23, 2013, Cook moved to dismiss Endotach II arguing that it is
duplicative of Endotach I. Endotach II, Dkt. No. 13, at 2. It argues that the facts in this
case are analogous to those in Serlin v. Arthur Andersen & Co., 3 F.3d 221 (7th Cir.
1993), and Endotach should not be allowed to benefit from its failure to ensure it had
standing to bring suit in the first instance.
On August 6, 2013, the Court granted Cook’s Motion to Dismiss Endotach I
because Endotach lacked standing when the original Complaint was filed on June 12,
2012. Endotach I, Dkt. No. 158. The dismissal was without prejudice. Id.
On August 13, 2013, the Court held a Telephonic Status Conference with the
parties to determine how best to proceed in this case and acknowledged the pending
Motion to Dismiss. Endotach II, Dkt. No. 27. Cook asserted at the Conference that it
intended to proceed with its Motion to Dismiss and filed its Reply on August 15, 2013.
Id. Dkt. No. 28.
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On August 2, 2013, Endotach filed an Amended Complaint in Endotach II, adding a
claim for willful infringement. Endotach II, Dkt. No. 18, ¶ 19. On the same date,
Endotach had moved to add such a claim in Endotach I as well. Endotach I, Dkt. No.
152, at 1.
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In its Reply, Cook argues that the cases are still duplicative because postjudgment matters remain in Endotach I, including any appeal and attorney’s fees. Id. at
1. In addition, Cook asserts that if the Court allows Endotach II to proceed, “it will have
rewarded Endotach’s blatant violation of the rule against duplicative lawsuits, and will
invite future litigants before this Court to do the same.” Id. In other words, Cook
contends that Endotach has some kind of unwarranted advantage if Endotach II is not
dismissed. Id. at 3-4.
Endotach argues that maintenance of this suit is not unduly burdensome
because Endotach I is before the same judge and special circumstances exist such that
the parties could avoid duplicative effort. Endotach II, Dkt. No. 19, at 3-8.
II. DISCUSSION
Generally, “a federal suit may be dismissed ‘for reasons of wise judicial
administration . . . whenever it is duplicative of a parallel action already pending in
another federal court.’” Serlin v. Arthur Andersen & Co., 3 F.3d 221, 223 (quoting Ridge
Gold Std. Liquors v. Joseph E. Seagram, 572 F. Supp. 1210, 1213 (N.D. Ill. 1983)
(further citations omitted)). “[A] suit is duplicative of the ‘claims, parties, and available
relief do not significantly differ between the two action.’” Id. (quoting Ridge Gold, 572 F.
Supp. at 1213 (citations omitted by the Gold Ridge court). This is not a mechanical rule,
rather, before dismissing a suit because it is duplicative, the Court should “consider any
special factors counseling for . . . the exercise of jurisdiction in the case . . . .” Calvert
Fire Ins. Co. v. Am. Mut. Reinsurance Co., 600 F.2d 1228, 1234 (7th Cir. 1979). Factors
the Court may consider include: (1) avoiding piecemeal litigation; (2) the order
jurisdiction was obtained; (3) the inconvenience of the forum; (4) whether dismissal will
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unduly prejudice or tactically disadvantage the non-moving party; (5) the burden on the
court and the parties to proceed; and (6) whether the second action will provide a
comprehensive solution of the general conflict. See id. at 1234; Tamari v. Bache & Co.
(Lebanon) S.A.L., 565 F.2d 1194 (7th Cir. 1977); Pfizer Inc. v. Apotex Inc., 640 F. Supp.
2d 1006, 1007 (N.D. Ill. 2009).
The crux of the matter is that any dismissal of this action, other than one with
prejudice, will only serve to further delay the resolution of the merits of Endotach’s
claims. The Court already determined that a dismissal with prejudice in Endotach I was
unwarranted because the standing issue in Endotach I could be and was resolved.
Further, the issues that Cook claims need resolution in Endotach I do not go to the
merits of Endotach’s claims.
Rather, the issues of attorney’s fees in Endotach I,
whether as a sanction for opposing Cook’s meritorious motion to dismiss or pursuant to
35 U.S.C. § 285, may be decided concurrently with the merits of Endotach’s claims and
Cook’s defenses in this case.
In addition, the only decisions on the merits in Endotach I was claim construction.
Neither party in Endotach I asked the Court to reconsider that ruling; therefore, it
appears unlikely that much of what was done in Endotach I would need to be repeated
here. The Court sees little burden on the parties to proceed. This is not a case like
Blair v. Equifax Check Services, Inc., 181 F.3d 832 (7th Cir. 1999), in which two nearly
identical class actions were pending, the earlier-filed suit having been resolved by
settlement (pending notice and final approval), the later-filed suit proceeding on the
merits. But even in that case, under the circumstances presented, the Seventh Circuit
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concluded that it was not error for the district judge assigned to the later-filed suit to
proceed. Id. at 839.
Finally, Cook argues that Endotach is trying to enlarge its rights by filing the
second suit before the first suit was dismissed, citing, among other things, Cook’s
laches defense and the limitation on damages in patent cases. Endotach II, Dkt. No.
28, at 3-4. In part, Cook takes issues with an aggressive case management plan in
Endotach II based on the work that was done in Endotach I. The Court is confused
about this position, however, in light of Cook’s multiple demands in Endotach I to file
early, piecemeal motions for summary judgment.
The most expeditious manner in
which to end this litigation is to resolve the parties’ claims and defenses on the merits,
capitalizing on the work that was done in Endotach I rather than throwing it out and
starting over. To the extent Cook’s defenses of laches or the statutory bar on damages
rely upon the filing date of Endotach II, the Court is confident that Cook can make the
proper argument for an equitable resolution.
III. CONCLUSION
For the foregoing reasons, Defendant Cook Medical Incorporated’s Motion to
Dismiss Duplicative Lawsuit, Docket No. 12, is DENIED.
IT IS SO ORDERED this 22nd day of August, 2013.
________________________________
LARRY J. McKINNEY, JUDGE
United States District Court
Southern District of Indiana
Distribution attached.
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Distribution:
Steven G. Cracraft
BRANNON ROBINSON SOWERS HUGHEL & DOSS PC
scracraft@brannonrobinson.com
Bradley G. Lane
BRINKS HOFER GILSON & LIONE
blane@brinkshofer.com
Dominic P. Zanfardino
BRINKS HOFER GILSON & LIONE
dzanfardino@brinkshofer.com
Michael T. Cooke
FRIEDMAN SUDER & COOKE
mtc@fsclaw.com
Brett Michael Pinkus
FRIEDMAN SUDER & COOKE - FORT WORTH TX
pinkus@fsclaw.com
Jonathan T Suder
FRIEDMAN SUDER & COOKE - FORT WORTH TX
jts@fsclaw.com
Glenn S. Orman
FRIEDMAN, SUDER & COOKE
orman@fsclaw.com
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