PPC Broadband, Inc. v. Corning Gilbert Inc.

Filing 31

MEMORANDUM-DECISION and ORDER - That Corning Gilbert's 22 Motion for Certificate of Appealability is DENIED. Signed by Chief Judge Gary L. Sharpe on 3/17/2014. (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

On November 21, 2013, this court issued a Memorandum-Decision
and Order, denying Corning Gilbert’s motion for summary judgment
seeking dismissal of this action on collateral estoppel grounds. (Dkt. No.
20.) Pending is Gilbert’s motion for a certificate of appealability on the
issue of whether Kearns v. Gen. Motors Corp., 94 F.3d 1553 (Fed. Cir.
1996), precludes application of the claim splitting doctrine to subsequent
litigation involving different patents from an earlier-brought action. (Dkt.
No. 22.) For the reasons that follow, Gilbert’s motion is denied.
II. Background
The instant case, involving the alleged infringement of U.S. Patent
No. 6,676,446 (“446 patent”), was commenced on May 8, 2013. (Compl.,
Dkt. No. 1.) 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
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“It is a basic tenet of federal law to delay appellate review until a final
judgment has been entered.” Koehler v. Bank of Bermuda Ltd., 101 F.3d
863, 865 (2d Cir. 1996) (citing Coopers & Lybrand v. Livesay, 437 U.S.
463, 475 (1978)). However, a district court may grant a party leave to
appeal a non-final or interlocutory order if it “involves a controlling question
of law as to which there is substantial ground for difference of opinion and
that an immediate appeal . . . may materially advance the ultimate
termination of the litigation.” 28 U.S.C. § 1292(b). Thus, § 1292 operates
as “a rare exception to the final judgment rule that generally prohibits
piecemeal appeals . . . [and] is reserved for those cases where an
intermediate appeal may avoid protracted litigation.” Koehler, 101 F.3d at
865-66 (citation omitted). Importantly though, § 1292(b) “was not intended
to open the floodgates to a vast number of appeals from interlocutory
orders in ordinary litigation, or to be a vehicle to provide early review of
difficult rulings in hard cases.” Martens v. Smith Barney, Inc., 238 F. Supp.
2d 596, 600 (S.D.N.Y. 2002) (internal quotation marks and citations
omitted). Accordingly, a court should “exercise great care in making a §
1292(b) certification.” Westwood Pharm., Inc. v. Nat’l Fuel Gas Distribution
Corp., 964 F.2d 85, 89 (2d Cir. 1992).
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IV. Discussion
The primary area of dispute between the parties on this motion is
whether Gilbert can demonstrate that there is a “substantial ground for
difference of opinion.” 28 U.S.C. § 1292(b). Upon review of Gilbert’s
motion, and the legal authority cited in support thereof, Gilbert has not
made such a showing. As Kearns explicitly held, the doctrine of claim
splitting would not preclude a patent infringement action dealing with a
patent that was not at issue in a prior litigation, because each patent raises
a distinct cause of action, and therefore represents a distinct transaction
for preclusion purposes. 94 F.3d at 1555. As this court pointed out in its
order, (Dkt. No. 20 at 6-7), to the court’s knowledge, every district court
that has dealt with this particular issue in the patent infringement context
has applied Kearns in the same manner. Gilbert has pointed to no cases
on this particular issue where a court has come to a conclusion contrary to
that reached by this court in its order, and, in fact, the Federal Circuit itself
has since re-affirmed its holding in subsequent cases. See, e.g., Abbey v.
Mercedes Benz of N. Am., Inc., 138 F. App’x 304, 307 (Fed. Cir. 2005)
(“Kearns provides that . . . causes of action based on patents that are not
included in a suit are ordinarily not . . . precluded[] by judgments that
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pertain to other patents.”) The cases cited by Gilbert in which claim
preclusion has barred a subsequent action all deal with situations where
the second action involves either: the same patent and same accused
products as a prior action, but different or related accused infringers; or,
the same patent and same parties, but different or related accused
products. (Dkt. No. 22, Attach. 2 at 7); see, e.g., Acumed LLC v. Stryker
Corp., 525 F.3d 1319, 1323-27 (Fed. Cir. 2008); Mars Inc. v. Nippon
Conlux Kabushiki-Kaisha, 58 F.3d 616, 620 (Fed. Cir. 1995). However, the
notable distinction is that, in those cases, the same patent was asserted in
both actions. There has thus been no legal authority cited where a party
has been precluded from bringing a second patent infringement action,
alleging infringement of a different patent than one asserted in a prior
action.
The court therefore agrees with PPC that the issue of whether claim
splitting applies to subsequent patent infringement suits brought on a
separate but related patent to a patent asserted in a prior infringement
action fails to satisfy § 1292(b)’s rigid certification requirements, and
Gilbert’s motion is denied.
V. Conclusion
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WHEREFORE, for the foregoing reasons, it is hereby
ORDERED that Corning Gilbert’s motion for a certificate of
appealability (Dkt. No. 22) is DENIED; and it is further
ORDERED that the Clerk provide a copy of this MemorandumDecision and Order to the parties.
IT IS SO ORDERED.
March 17, 2014
Albany, New York

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