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Westinghouse Air Brake Technologies Corp. v. Siemens Mobility, Inc.

United States District Court, D. Delaware

January 29, 2019




         Presently pending before the Court in this patent infringement case is Plaintiff Westinghouse Air Brake Technologies Corporation's ("Plaintiff or "Wabtec") motion seeking severance of certain of Defendant Siemens Mobility, Inc.'s ("Defendant" or "Siemens") counterclaims, pursuant to Federal Rule of Civil Procedure 21. (D.I. 146) Siemens opposes the Motion. For the reasons set forth below, Plaintiffs Motion is GRANTED.

         I. BACKGROUND

         A. Procedural Background

         On April 21, 2016, Siemens filed suit against Wabtec in this Court, alleging that Wabtec infringed a number of Siemens' patents concerning various aspects of positive train control ("PTC") technology. See Siemens Mobility Inc. v. Westinghouse Air Brake Technologies Corp. d/b/a/ Wabtec Corp., Civil Action No. 16-284-LPS (D. Del.) (hereafter, the "16-284 Action"). Thereafter, Wabtec filed counterclaims in the 16-284 Action, including counterclaims asserting that Siemens infringes the three asserted patents that are now at issue in the instant action: United States Patent Nos. 7, 398, 140 (the '"140 Patent"), 8, 175, 764 (the "764 Patent") and 8, 478, 463 ('"463 Patent") (the "asserted patents"). (D.I. 56, 16-284 Action) Siemens moved to sever those counterclaims from the 16-284 Action, and the Court granted Siemens' severance motion on August 17, 2017. Instead of re-filing the patent infringement allegations in an affirmative Complaint in this District, however, on September 8, 2017, Wabtec filed such a Complaint in the United States District Court for the Western District of Pennsylvania ("Western District of Pennsylvania"). (D.I. 1 at ¶¶ 1, 21-23) That filing gave rise to the instant action. On September 19, 2017, Wabtec filed a First Amended Complaint, containing similar infringement allegations as to the three asserted patents. (D.I. 14)

         Soon after, Siemens moved to transfer venue for the instant action back to this District. (D.I. 19) The Western District of Pennsylvania Court granted that transfer motion on November 20, 2017. (D.I. 34) On November 30, 2017, Chief Judge Leonard P. Stark referred the instant case to the Court to, inter alia, resolve any matters related to scheduling, and any motions to dismiss, stay or transfer venue. (D.I. 38) And on December 15, 2017, Siemens filed its Answer to the First Amended Complaint; that Answer included six counterclaims (all related to at least one of the asserted patents) that are not at issue with the instant Motion. (D.I. 42 at 17-29)

         About seven months later, on July 19, 2018, Siemens filed a motion seeking leave to amend its counterclaims. This motion (the "motion to amend") sought to add four counterclaims alleging violations of U.S. antitrust law (the "antitrust counterclaims"), one alleging a violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B), and one alleging a violation of the Delaware Deceptive Trade Practices Act, 6 Del. C. § 2531 et seq. ("DDTPA"), (together, the "Amended Counterclaims"). (D.I. 107 & exs. A-B) Wabtec opposed the motion to amend, but on October 3, 2018, Chief Judge Stark issued an order granting that motion. (D.I. 142) In doing so, Chief Judge Stark found that: (1) the motion to amend was not untimely; (2) Wabtec had not shown that the Amended Counterclaims were futile; and (3) the addition of the Amended Counterclaims to the instant case would not unfairly prejudice Wabtec as "their addition to this case, which still has ample time left for discovery, is more likely to promote the just, speedy, and relatively inexpensive resolution of the parties' disputes than would the initiation of yet another case between these parties." (Id.) Chief Judge Stark ruled that Wabtec "may, if it wishes, file a motion to sever under Rule 21, motion to dismiss [the Amended Counterclaims] under Rule 12, or particularized objections to requested discovery, but discovery on all claims and counterclaims will proceed unless and until any such motion is granted or other relief is ordered." (Id.)

         Thereafter, on October 18, 2018, Wabtec filed the instant Motion seeking severance of the Amended Counterclaims, (D.I. 146), along with a motion seeking dismissal of the Amended Counterclaims ("the motion to dismiss"), (D.I. 148). Chief Judge Stark later referred the instant Motion to the Court for resolution, (D.I. 160), and briefing on the instant Motion was completed on November 12, 2018, (D.I. 168).[1]

         B. Factual Background

         Wabtec develops, manufactures and sells PTC technology, which is used to construct collision avoidance systems in trains. (D.I. 14 at ¶¶ 24-25) In 2008, Congress enacted the Rail Safety Improvement Act ("RSIA") which required all Class I railroads and passenger rail operators to implement a mandatory PTC collision avoidance system. (Id. at ¶ 25) Wabtec owns the asserted patents, which, as was previously noted above, are patents to aspects of PTC technology. (Id. at ¶¶21-23)

         Siemens also develops, manufactures and sells PTC technology, specifically the Trainguard PTC system, which includes the Trainguard PTC Onboard Unit ("OBU"). (Id. at ¶¶ 59-60) With its affirmative patent claims here, Wabtec is asserting that Siemens directly, indirectly and willfully infringes the asserted patents by making, using, offering to sell, selling, and/or importing the Trainguard PTC and/or the Trainguard PTC OBU. (Id. at H 87, 101, 115)

         As noted above, the Amended Counterclaims include six different counterclaims. The four antitrust counterclaims all relate to Siemens' allegation that Wabtec has "engaged in an ongoing scheme to exclude Siemens from the [Interoperable Train Control, or "ITC"]-PTC market[, ]" and has used "illegal anticompetitive actions such as tying, unfair exclusive dealing, and deception [to] maintain its monopoly over the ITC-PTC, [ITC-PTC Onboard Computer, or "OBC"], and [ITC-PTC Back Officer Server Software, or "BOS"] markets[, ]" to the detriment of its "only competitive threat" in those markets, Siemens. (D.I. 143 at 29-30) The four antitrust counterclaims allege, respectively, that Wabtec engages in monopolization in violation of the Sherman Antitrust Act ("Sherman Act"), attempted monopolization in violation of the Sherman Act, tying in violation of the Sherman Act and the Clayton Act, and agreements in restraint of trade in violation of the Sherman Act. (Id. at ¶¶ 156-205) The Lanham Act counterclaim alleges that Wabtec has made knowingly false or misleading statements in commercial advertising about the interoperability, safety, technical or other characteristics of Siemens' ITC-PTC components, which materially mislead customers to Siemens' detriment. (Id. at ¶¶ 206-15) Lastly, the DDTPA counterclaim is very similar in nature to the Lanham Act counterclaim. (Id. at ¶¶ 216-23)


         A. ...

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