Recently, Judge Leonard P. Stark issued decisions with respect to defendants’ motion to dismiss plaintiff’s claims of willful patent infringement pursuant to Federal Rules of Civil Procedure 12(b)(6) and 41(a)(1). St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co. Ltd. et al., C.A. No. 12-69-LPS (D. Del. Mar. 29, 2013). First, with respect to the briefing on the matter, Judge Stark granted plaintiff’s motion to file a sur-reply in opposition to defendants’ motion to dismiss. (D.I. 21.). Judge Stark noted that a court “may grant leave to file a sur-reply if it responds to new evidence, facts, or arguments.” Id. at 2. Defendants’ reply in support of its motion to dismiss, as Judge Stark explained, contained “newly-cited evidence,” including a complaint filed in the District of Delaware, a previously uncited Eighth Circuit case, and details regarding an entity from a prior, related lawsuit. Id. Granting plaintiff’s motion, Judge Stark explained that plaintiff’s sur-reply “will allow the Court to more fully and fairly evaluate Defendants’ pending motion to dismiss.” Id. at 3. Moreover, “Plaintiff’s sur-reply is relatively short, challenges Defendant’s interpretation and application of [the Eighth Circuit case], and explains Plaintiff’s view of the newly presented evidence.” Id. Judge Stark thus considered the sur-reply in reaching his decision on the merits of defendants’ motion. See id.
Judge Stark ultimately denied defendants’ motion to dismiss. (D.I. 22.). Defendants argued that plaintiff failed to state a claim because its claim was barred by Rule 41(a)(1). See id. at 4. Under Rule 41(a)(1)(B), “[i]f the plaintiff files a second notice of dismissal pursuant to Rule 41(a)(1), the Court must dismiss an action based on or including the same claim with prejudice.” Id. at 3. In December 2011, the current plaintiff filed a complaint against Samsung Electronics USA (“SE USA”) claiming SE USA willfully infringed plaintiff’s six patents as the result of sales and distribution of products containing the Android operating system. Id. at 1. In January 2012, that suit was voluntarily dismissed. The same day it dismissed that suit, plaintiff filed a second complaint against Samsung Electronics America, Inc. (“SEA”) and Samsung Telecommunications America, LLC (“STA”) for willful infringement of the same six patents as the result of the same type of sales and distribution. Id. Later that month, that second suit was voluntarily dismissed. Id. On the same day of the second dismissal, plaintiff filed a third suit—the suit at hand—against Samsung Electronics Co. Ltd. (“SEC”), SEA, and STA. Id. at 1-2. Once again, the plaintiff has sued for willful infringement of the same six patents based on the same type of sales and distribution. Id. at 2.
The issue before the Court, therefore, was whether the first two dismissals mandated dismissal of the third suit. Plaintiff first argued that the “two dismissal rule” was inapplicable because in the first suit SE USA was a “defunct corporation which could not sue or be sued.” Id. at 4. Judge Stark rejected this argument, explaining that “Federal Rule of Civil Procedure 3 states that an action commences upon the filing of the complaint.” Id. at 5. However, as Judge Stark explained, in order for the “two dismissal rule” to apply, the defendants must share some close relationship: they must be “the same, substantially the same, or in privity with each other,” or they must be “sufficiently interrelated so that they share the same legal rights.” Id. at 5-6. Judge Stark found that defendants failed to show by a preponderance of the evidence that such a close relationship existed. Id. at 7. Defendants had presented some evidence, particularly that “SE USA’s incorporator shares the same address as Samsung’s regional headquarters,” and that the incorporator “served as general counsel of SEA.” Id. at 6-7. Judge Stark found, however, that this relationship between SE USA and the subsequent defendants “is only through a single person” and “establishes no more than a tenuous relationship.” Id. at 7. Moreover, defendants failed to demonstrate “SE USA had the same, similar, or any legal interest in the subject matter of the three litigations, i.e., the Android operating system.” Id. at 7. Judge Stark therefore denied defendants’ motion to dismiss. Id. at 8.