United States District Court, D. Delaware
before the Court is Defendant's "Motion to Dismiss
with Prejudice on the Basis of Claim Preclusion" (D.I.
12) and related briefing (D.I. 13, 16, 19). For the reasons
that follow, IT IS HEREBY ORDERED THAT Defendant's Motion
to Dismiss with Prejudice on the Basis of Claim Preclusion
(D.I. 12) is GRANTED, as to accused Windows products, and is
Motion to Dismiss
requires a complainant to provide "a short and plain
statement of the claim showing that the pleader is entitled
to relief" Fed.R.Civ.P. 8(a)(2). Rule 12(b)(6) allows
the accused party to bring a motion to dismiss the claim for
failing to meet this standard. A Rule 12(b)(6) motion may be
granted only if, accepting the well-pleaded allegations in
the complaint as true and viewing them in the light most
favorable to the complainant, a court concludes that those
allegations "could not raise a claim of entitlement to
relief." Bell Atl. Corp. v. Twombly, 550 U.S.
544, 558 (2007).
'detailed factual allegations' are not required, a
complaint must do more than simply provide 'labels and
conclusions' or 'a formulaic recitation of the
elements of a cause of action.'" Davis v.
Abington Mem'l Hosp., 765 F.3d 236, 241 (3d
Cir. 2014) (quoting Twombly, 550 U.S. at 555). I am
"not required to credit bald assertions or legal
conclusions improperly alleged in the complaint." In
re Rockefeller Ctr. Props., Inc. Sec. Litig., 311 F.3d
198, 216 (3d Cir. 2002). A complaint may not be dismissed,
however, "for imperfect statement of the legal theory
supporting the claim asserted." See Johnson v. City
of Shelby, 135 S.Ct. 346, 346 (2014).
complainant must plead facts sufficient to show that a claim
has "substantive plausibility." Id. at
347. That plausibility must be found on the face of the
complaint. Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009). "A claim has facial plausibility when the
[complainant] pleads factual content that allows the court to
draw the reasonable inference that the [accused] is liable
for the misconduct alleged." Id. Deciding
whether a claim is plausible will be a "context-specific
task that requires the reviewing court to draw on its
judicial experience and common sense." Id. at
preclusion requires: (1) a final judgment on the merits in a
prior suit, (2) where both suits involve the same parties or
their privities, and (3) both suits are based on the same
cause of action. CoreStates Bank, N.A. v. HulsAm.,
Inc., 176 F.3d 187, 194 (3d Cir. 1999).
patent infringement cases, "a cause of action is defined
by the transactional facts from which it arises, and the
extent of the factual overlap." Senju Pharm. Co. v.
Apotex Inc., 746 F.3d 1344, 1348 (Fed. Cir. 2014). The
relevant transactional facts are (1) whether both suits
involve the same patent, and (2) whether both suits involve
accused products that are the same or "essentially the
same." Id. at 1349-50. As to the first fact, claim
preclusion applies even when the plaintiff chooses different
patent claims in the second lawsuit. See Brain Life, LLC v.
Elekta, Inc., 746 F.3d 1045, 1053 (Fed. Cir. 2014)
(applying, on summary judgment, claim preclusion to method
claims dismissed without prejudice in first suit). As to the
second fact, two products are "essentially the
same" "where the differences between them are
merely 'colorable' or 'unrelated to the
limitations in the claim of the patent.'" Acumed
LLC v. Stryker Corp., 525 F.3d 1319, 1324 (Fed. Cir.
2008). Thus, claim preclusion bars accusing infringing acts
"that are accused in [a] first action or could have been
made subject to that action." Brain Life, 746
F.3d at 1054 (citing Aspex Eyewear Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1343 (Fed. Cir. 2012)).
preclusion is an affirmative defense. It is not generally a
basis for dismissal on a Rule 12(b)(6) motion unless
"apparent on the face of the complaint."
Hoffman v. Nordic Naturals, Inc., 837 F.3d 272, 280
(3d Cir. 2016). "If not apparent, the district court
must either deny the [motion] or convert it to a motion for
summary judgment... ." Id.
First and Second Requirements of Claim Preclusion
filed suit against Defendant on September 24, 2014, alleging
infringement of U.S. Patent No. 6, 920, 567 ("the
'567 Patent") ("First Action"). (No.
14-cv-1226, D.I. 1). Plaintiff pled that Defendant had
infringed "at least" apparatus claims 1, 2, 3, 4,
5, 6, 7, 13, 14, and 15 and method claims 28-32 of the
'567 patent. (Id. at ¶¶ 38, 41).
Plaintiffs infringement theory in the First Action was based
on a "Software Protection Platform" (SPP) allegedly
included in Defendant's Windows product. (First Action,
D.I. 329 at 7). On February 10, 2017, Defendant moved for
summary judgment of non-infringement. (First Action, D.I.
218). On June 12, 2017, the Court granted Defendant's
motion and entered final judgment. (First Action, D.I. 330,
25, 2017, before the Court entered final judgment in the
First Action, Plaintiff filed a new suit against Defendant,
again alleging infringement of the '567 Patent
("Second Action"). (D.I. 1). On October 1, 2017,
Plaintiff filed an Amended Complaint. (D.I. 11). Plaintiff
pled that Defendant infringes "at least" apparatus
claims 8-11 and method claims 26-27 of the '567 patent.
(Id. at ¶¶ 27, 28, 29, 34, 40, 41, 42,
45). Claims 8-11 depend from claim 1. (Id.).
Plaintiffs infringement theory in the Second Action is based
on Defendant's "Play Ready DRM software," which
the Amended Complaint indicates is included in both Windows
and other products. (D.I. 11, ¶ 10). Defendant's
"PlayReady DRM software protects distributed digital
content downloaded to end user devices and systems, for
examples, Windows .. . ." (D.I. 11, ¶ 22).
argues, and Plaintiff does not dispute, that the first two
requirements of claim preclusion are met. (D.I. 13 at 8-9;
D.I. 16). The First Action terminated with a final judgment
on the merits, and both ...