Duplicative-Litigation Doctrine: Duplicative Complaint Dismissed as a Result of not Properly Addressing Accused Products in First Lawsuit

By Michael Dorfman | September 20, 2022

In a September 7, 2022 precedential opinion in Arendi S.A.R.L. v. LG Electronics Inc. (available here), the Federal Circuit affirmed the grant of a motion to dismiss under the duplicative-litigation doctrine.  The duplicative-litigation doctrine prevents plaintiffs from maintaining two separate actions involving the same subject matter at the same time in the same court against the same defendant.


In the first case (“Arendi I”), Arendi S.A.R.L. (“Arendi”) alleged that various LG Electronics Inc. and LG Electronics USA, Inc. (collectively, “LG”) products infringed an Arendi patent.  Arendi filed a discovery disclosure that listed hundreds of LG products as infringing four claims of the Arendi patent but its disclosure provided claim charts for only one of those products – LG’s Rebel 4 phone, and it labeled that phone as “exemplary.”


Discovery disputes followed in which LG indicated that Arendi must provide claim charts demonstrating how the non-Rebel 4 products infringe or explain why the current claim charts are representative.  Thereafter, the parties agreed on eight representative products, seven of which were non-Rebel 4 products.  Arendi did not move to supplement its disclosure after LG provided discovery on those representative products, nor did Arendi move to supplement after LG again raised the issue in response to an interrogatorye.


Thereafter, Arendi provided its expert report and LG moved to strike portions of the report because it allegedly “disclosed-for the first time-infringement contentions for five of” the seven non-Rebel 4 representative products.  The district court granted the motion, explaining that “LG understood Arendi was accusing only the Rebel 4” of infringing the asserted Arendi patent since Arendi repeatedly failed to update its infringement contentions.


In response, Arendi filed the Arendi II complaint in which it asserted that LG’s non-Rebel 4 products infringed the Arendi patent.  LG moved to dismiss the complaint as duplicative since all of the non-Rebel 4 products accused in Arendi II were also accused in Arendi I.  The motion was granted without prejudice, and Arendi appealed.


Finally, Arendi moved to supplement its disclosure in Arendi I.  The district court denied that motion.


On appeal, Arendi challenged the district court’s determination that Arendi I and Arendi II involve the same subject matter.  Arendi argued that the products are not identical because there is no overlap between the accused products.  According to Arendi, Arendi I involves only LG’s Rebel 4 phone and Arendi II involves the non-Rebel 4 products.


Finding that Arendi “misunderstands (if not misrepresents) the district court’s Arendi I order”, the Federal Circuit stated that the district court granted the motion to strike because Arendi “failed to fulfill its discovery obligations” with respect to the non-Rebel 4 products, and its expert report was procedurally untimely, not because Arendi failed to sufficiently accuse the non-Rebel 4 products.


The Federal Circuit concluded, “[l]eft with the simple and obvious fact that the non-Rebel 4 products accused in Arendi II are identical to the products accused in Arendi I, we determine that the district court did not err in dismissing the Arendi II complaint as improperly duplicative.”


Following Arendi v. LG, a patent owner should be very mindful of its discovery obligations, including promptly moving to amend its disclosures (whether under normal discovery procedures or local patent rules) so that there is no question whether particular products are truly at issue in a lawsuit and that the infringement case for those products has been sufficiently disclosed in advance of expert discovery.