PPC Broadband, Inc. v. Corning Gilbert Inc.

Filing 20

MEMORANDUM-DECISION and ORDER - That Corning Gilbert's 10 Motion to Dismiss is DENIED. That the parties notify Magistrate Judge Peebles in order to schedule further proceedings in accordance with this Memorandum-Decision and Order. Signed by Chief Judge Gary L. Sharpe on 11/21/2013. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
PPC BROADBAND, INC.,
d/b/a PPC,
Plaintiff,

5:13-cv-538
(GLS/DEP)

v.
CORNING GILBERT INC.,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Hiscock, Barclay Law Firm
One Park Place
300 South State Street
Syracuse, NY 13202-2078

DOUGLAS J. NASH, ESQ.
JASON C. HALPIN, ESQ.
JOHN D. COOK, ESQ.

FOR THE DEFENDANT:
DLA Piper LLP
500 Eighth Avenue NW
Washington, DC 22004

ANDREW N. STEIN, ESQ.
JOSEPH P. LAVELLE, ESQ.

Harter, Secrest Law Firm
1600 Bausch and Lomb Plaza
Rochester, NY 14604-2711

DAVID M. LASCELL, ESQ.
JERAULD E. BRYDGES, ESQ.

Gary L. Sharpe
Chief Judge
MEMORANDUM-DECISION AND ORDER
I. Introduction

Plaintiff PPC Broadband, Inc. commenced this action asserting a
patent infringement claim against Corning Gilbert Inc. (Compl., Dkt. No. 1.)
Pending is Corning Gilbert’s motion to dismiss the complaint pursuant to
Fed. R. Civ. P. 12(b)(6). (Dkt. No. 10.) For the reasons that follow, the
motion is denied.
II. Background
A.

Facts1
Both PPC and Corning Gilbert are engaged in the business of

designing and manufacturing coaxial cable connectors. (Compl. ¶¶ 7-8,
18.) On November 13, 2002, PPC filed a patent application for a coaxial
cable connector, (id. ¶ 12), which was approved and issued to PPC on
January 13, 2004 as U.S. Patent No. 6,676,446 (“446 patent”), (id. ¶ 13;
Dkt. No. 1, Attach. 1). PPC has not licensed the use of this patent to
Corning Gilbert. (Compl. ¶ 14.)
PPC alleges that Corning Gilbert has infringed the 446 patent by
“making, using, selling, offering for sale, and/or importing coaxial cable
connectors,” specifically Corning Gilbert’s UltraRange series connectors.

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The facts are drawn from PPC’s complaint and presented in the
light most favorable to them.
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(Id. ¶ 18.)
B.

Procedural History
The instant case, involving the alleged infringement of the 446

patent, was commenced on May 8, 2013. (Compl.) At the time this action
was commenced, PPC had already commenced another patent
infringement action against Corning Gilbert, which remains pending. (Dkt.
No. 1, 5:11-cv-761.) In that earlier-filed case, PPC alleges that Corning
Gilbert’s manufacture, sale, and importation of its UltraRange coaxial cable
connectors infringes on different PPC patents from the one involved in this
lawsuit, namely U.S. Patent Nos. 6,558,194 (“194 patent”) and 6,848,940
(“940 patent”). (Id. ¶ 1.)
III. Standard of Review
The standard of review under Fed. R. Civ. P. 12(b)(6) is well settled
and will not be repeated here. For a full discussion of the standard, the
court refers the parties to its prior decision in Ellis v. Cohen & Slamowitz,
LLP, 701 F. Supp. 2d 215, 218 (N.D.N.Y. 2010).
IV. Discussion
Corning Gilbert contends that the instant action filed by PPC
regarding the 446 patent should be dismissed pursuant to the “claim
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splitting” doctrine, as duplicative of another action previously filed by PPC
against Corning Gilbert. (Dkt. No. 10, Attach. 2 at 4-13.) In opposition,
PPC contends that each patent represents a different cause of action, and
therefore the claim splitting doctrine would not require dismissal of the
second lawsuit. (Dkt. No. 16 at 4-12.)
The parties agree that, while res judicata is governed by regional
circuit law, see Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed.
Cir. 2008), the specific question of whether two claims for patent
infringement are identical or constitute the same cause of action is one that
is unique to patent law, and therefore is governed by Federal Circuit law,
see id. at 1323-24; (Dkt. No 10, Attach. 2 at 5; Dkt. No. 16 at 3).
“The rule against claim splitting is well-established.” Salib v. I.C.
Sys., Inc., No. Civ.A.3:01–CV1083, 2002 WL 31060368, at *2 (D. Conn.
July 24, 2002). That rule “prohibits a plaintiff from prosecuting its case
piecemeal, and requires that all claims arising out of a single wrong be
presented in one action.” Id. (internal quotation marks and citation
omitted). Under the claim splitting doctrine, “a party cannot avoid the
effects of res judicata by splitting [its] cause of action into separate
grounds of recovery and then raising the separate grounds in successive
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lawsuits.” Am. Stock Exch., LLC v. Mopex, Inc., 215 F.R.D. 87, 91
(S.D.N.Y. 2002) (citations omitted). “Rather, a party must bring in one
action all legal theories arising out of the same transaction or series of
transactions.” Id. (citation omitted). Thus, res judicata bars claims in a
subsequent action where, among other things, “the claims asserted in
th[at] subsequent action were, or could have been, raised in the prior
action.” Pike v. Freeman, 266 F.3d 78, 91 (2d Cir. 2001) (internal
quotation marks and citation omitted). However, res judicata applies to bar
later litigation only when the two cases involve “the same cause of action.”
EDP Med. Computer Sys., Inc. v. United States, 480 F.3d 621, 624 (2d Cir.
2007).
“Whether a claim . . . could have been raised [in a prior action]
depends in part on whether the same transaction or connected series of
transactions is at issue, and whether the same evidence is needed to
support both claims.” Pike, 266 F.3d at 91 (internal quotation marks and
citation omitted); see Coleman v. B.G. Sulzle, Inc., 402 F. Supp. 2d 403,
418-19 (N.D.N.Y. 2005).
In the specific context of patent infringement suits, the Federal Circuit
has held that infringement claims based on different patents do not satisfy
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the “same transaction” requirement; rather, because “each patent
establishes an independent and distinct property right, . . . [e]ach patent
asserted raises an independent and distinct cause of action.” Kearns v.
Gen. Motors Corp., 94 F.3d 1553, 1555 (Fed. Cir. 1996) (“Each . . . patent[]
. . . is, by law, directed to a separate invention. Indeed, two independent
and distinct inventions can not be claimed in the same patent,” (citing 35
U.S.C. §§ 101, 121)); see Foster v. Hallco Mfg. Co., 947 F.2d 469, 476
(Fed. Cir. 1991) (describing a “cause of action” as “a suit on the same
device alleged to infringe the same patent,” (emphasis added)). This
proposition has since been followed by several district courts. See, e.g.,
Trading Techs. Int’l, Inc. v. BCG Partners, Inc., No. 10 C 715, 2011 WL
3157304, at *4 (N.D. Ill. July 26, 2011) (“In other words, where the patents
involved in the two suits are different, . . . each patent creates a unique set
of ‘transactional facts’ for purposes of claim preclusion”); SciMed Life Sys.
v. Advanced Cardiovascular Sys., Inc., No. C 99-0112, 1999 WL
33244568, at *1 (N.D. Cal. May 17, 1999) (“Kearns is . . . dispositive of
[the] suggestion that a procedural bar should lie against [a second patent
infringement] suit under a ‘should have been brought’ theory, because
each patent constitutes its own independent cause of action.”); Stratos
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Lightwave, Inc. v. Picolight, Inc., No. Civ.A.03-917, 2005 WL 681308, at *2
(D. Del. Mar. 23, 2005) (holding that the “claim splitting” doctrine did not
apply where different patents were asserted in successive lawsuits).
Here, Corning Gilbert’s motion must be denied. Corning Gilbert is
essentially asserting that the claim of infringement of the 446 patent is so
related to the claims of infringement of the 194 and 940 patents that they
should have been brought in the same case, and the failure to do so
should preclude PPC from now bringing the 446 patent infringement claim
in this later action. (Id.) However, as discussed above, Kearns makes
clear that each patent represents a distinct cause of action, and, therefore,
a second patent infringement action is not precluded where it deals with
different patents from those raised in an earlier action. See 94 F.3d at
1555; SciMed Life Sys., 1999 WL 33244568, at *1.
V. Conclusion
WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Corning Gilbert’s motion to dismiss (Dkt. No. 10) is
DENIED; and it is further
ORDERED that the parties notify Magistrate Judge Peebles in order
to schedule further proceedings in accordance with this Memorandum7

Decision and Order; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
November 21, 2013
Albany, New York

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