United States District Court, D. Delaware
G. Day & Andrew C. Mayo, ASHBY & GEDDES, Wilmington,
DE; Henry C. Bunsow, Denise M. De Mory, Sushila Chanana,
& Michael N. Zachary, BUNSOW DE MORY LLP, Redwood City,
CA, attorneys for Plaintiff
Martina Tyreus Hufnal, FISH & RICHARDSON, PC, Wilmington,
DE; Frank E. Scherkenbach, Steven R. Katz, & Whitney
Reichel, FISH & RICHARDSON, PC, Boston, MA, attorneys for
ANDREWS, U.S. DISTRICT JUDGE
pending before the Court is Defendant's Motion to Dismiss
(D.I. 38) and Plaintiffs Cross-Motion for Leave to File a
Motion for Reconsideration (D.I. 47). The parties have fully
briefed the issues. (D.I. 39, 48, 51, 53, 57). For the
following reasons, Defendant's Motion is GRANTED-IN-PART
and DENIED-IN-PART and Plaintiffs Cross-Motion is DENIED.
ViaTech Technologies, Inc. previously brought suit against
Defendant Microsoft Corporation accusing Windows and Office
products of infringing "at least" claims 1-7,
13-15, and 28-32 of the U.S. Patent No. 6, 920, 567
("the '567 patent"). (No. 14-1226-RGA, D.I. 1)
("First Action"). 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, 331). That judgment was affirmed by the
Federal Circuit on May 23, 2018. ViaTech Tech. Inc. v.
Microsoft Corp., 733 Fed.Appx. 542 (2018).
15, 2017, Plaintiff brought the current suit against
Defendant accusing various products of infringing claims 8-11
and 26-27 of the same patent as was asserted in the First
Action. (D.I. 1). Defendant moved to dismiss Plaintiff s
First Amended Complaint under the doctrine of claim
preclusion. (D.I. 12). I granted that motion in part, holding
that claim preclusion barred Plaintiff from bringing new
claims against Windows products for infringement of the
'567 patent. (D.I. 25 at 9). Plaintiff has now filed a
Second Amended Complaint accusing Microsoft's Play Ready
Product Suite of direct and indirect infringement of the
'567 patent and adding new infringement
claims against Windows for purported infringement
post-final judgment of the First Action. (D.I. 37). Defendant
has moved to dismiss the Second Amended Complaint on the
basis of claim preclusion, issue preclusion, or the
Kessler Doctrine. (D.I. 38). Plaintiff has
cross-moved for leave to file a motion for reconsideration of
the order dismissing the First Amended Complaint. (D.I. 47).
Motion for Leave to File Motion for Reconsideration
purpose of a motion for reconsideration is to "correct
manifest errors of law or fact or to present newly discovered
evidence." Max's Seafood Cafe v. Quinteros,
176 F.3d 669, 677 (3d Cir. 1999). "A proper Rule 59(e)
motion ... must rely on one of three grounds: (1) an
intervening change in controlling law; (2) the availability
of new evidence; or (3) the need to correct a clear error of
law or prevent manifest injustice." Lazaridis v.
Wehmer, 591 F.3d 666, 669 (3d Cir. 2010).
Rule 7.1.5 provides that motions for reargument "shall
be filed within 14 days after the Court issues its opinion or
decision." "When an act may or must be done within
a specified time, the court may for good cause extend the
time ... on motion made after the time has expired if the
party failed to act because of excusable neglect."
Motion to Dismiss
reviewing a motion to dismiss pursuant to Federal Rule of
Civil Procedure 12(b)(6), the Court must accept the
complaint's factual allegations as true. See Bell
Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007). Rule
8(a) requires "a short and plain statement of the claim
showing that the pleader is entitled to relief."
Id. at 555. The factual allegations do not have to
be detailed, but they must provide more than labels,
conclusions, or a "formulaic recitation" of the
claim elements. Id. ("Factual allegations must
be enough to raise a right to relief above the speculative
level... on the assumption that all the allegations in the
complaint are true (even if doubtful in fact).").
Moreover, there must be sufficient factual matter to state a
facially plausible claim to relief. Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). The facial plausibility
standard is satisfied when the complaint's factual
content "allows the court to draw the reasonable
inference that the defendant is liable for the misconduct
alleged." Id. ("Where a complaint pleads
facts that are merely consistent with a defendant's
liability, it stops short of the line between possibility and
plausibility of entitlement to relief." (internal
quotation marks omitted)).
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. Huls Am.,
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. In patent infringement
cases, 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)); see also Allen v. McCurry, 449 U.S. 90, 94
(1980) ("Under [claim preclusion], a final judgment on
the merits of an action precludes the parties . . . from
relitigating issues that were or could have been raised in
that action."). However, post-judgment infringing
actions "do not involve the same 'claim' for
claim-preclusion purposes, even if all of the conduct is
alleged to be unlawful for the same reason." Asetek
Danmark A/S v. CMI USA Inc., 852 F.3d 1352, 1365 (Fed.
Cir. 2017); see also Mentor Graphics Corp. v. EVE-USA,
Inc., 851 F.3d 1275, 1299 (Fed. Cir. 2017).
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.
preclusion requires: "(1) the identical issue was
previously adjudicated; (2) the issue was actually litigated;
(3) the previous determination was necessary to the
[judgment]; and (4) the party being precluded from
relitigating the issue was fully represented in the prior
action." Jean Alexander Cosmetics, Inc. v.
L'Oreal USA, Inc.,458 F.3d 244, 249 (3d Cir. 2006).
"[A]lthough issue preclusion is an affirmative defense,
it may be raised in a motion to dismiss under  Rule
12(b)(6)." M& M Stone Co. v. Pennsylvania,388 ...