Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Arendi S.A.R.L. v. LG Electronics, Inc., No. 2021-1967 (Sept. 7, 2022), affirming the district court’s dismissal of the complaint as duplicative.
Arendi S.A.R.L. (“Arendi”) first filed suit against LG Electronics Inc. and LG Electronics USA, Inc. (collectively, “LG”) in the District of Delaware, alleging infringement of three patents, including U.S. Patent No. 7,917,843 (the “’843 Patent”). After the district court struck part of Arendi’s infringement report, Arendi filed a second complaint against LG in the same court, again alleging infringement of the ’843 Patent. The district court dismissed the complaint under the duplicative-litigation doctrine, which prevents plaintiffs from maintaining two separate actions involving the same subject matter at the same time in the same court against the same defendant. Arendi appealed.
The Federal Circuit affirmed. The Court agreed that the cases involved the same ’843 patent, which was unquestionably asserted in both the first and second suits (Arendi I and II, respectively). The Court’s determination of whether the two suits involved the same subject matter therefore hinged on whether the accused products were essentially the same.
Arendi argued that the Arendi II accused products had been stricken in Arendi I due to Arendi’s procedural errors. Under the District of Delaware’s rules, Arendi was required to “specifically identify” all accused products and the patents they infringed and produce infringement claim charts relating to each accused product. Arendi’s initial disclosures in Arendi I identified hundreds of LG products as infringing. The parties then agreed on eight representative accused products, but Arendi only ever provided claim charts for one product—LG’s Rebel 4 phone. Accordingly, the district court granted LG’s motions to strike portions of Arendi’s expert report, which included untimely infringement contentions for non-Rebel 4 representative products.
On appeal, Arendi argued that the products subject to the Arendi I motion to strike were effectively no longer at issue in Arendi I and therefore could not be duplicative of the Arendi II products. The Court disagreed. It affirmed the district court’s finding that Arendi did accuse those products in Arendi I but failed to fulfill its discovery obligations with respect to those products. Therefore, the same accused products were at issue in both cases, and the district court did not err in dismissing the Arendi II complaint as improperly duplicative.