Gharb v. Mitsubishi Electric Corporation
148 F. Supp. 3d 44
| D.D.C. | 2015Background
- Plaintiff Samy Gharb, owner of U.S. Patent No. 6,552,654 ("the ’654 patent"), sued Mitsubishi Electric entities (MELCO and MEAU) and five individuals alleging infringement by the ALPHA line (notably "PLC ALPHA XL").
- Gharb previously litigated identical infringement claims against Mitsubishi entities in two earlier suits: Gharb I (N.D. Ill.) and Gharb II (Ct. Fed. Cl.); those actions were dismissed with prejudice or for lack of jurisdiction.
- The ’654 patent issued in 2003 but expired on April 22, 2007 for failure to pay maintenance fees; the six-year damages window under 35 U.S.C. § 286 therefore ended April 22, 2013.
- Defendants moved to dismiss under Rule 12(b)(6), asserted res judicata as to MEAU, sought to strike Gharb’s later filing attacking defendants’ counsel, requested attorney’s fees under 35 U.S.C. § 285, and requested an anti-suit (pre-filing) injunction.
- The Court found Gharb’s complaint: barred by res judicata as to MEAU, substantively deficient (fails to plead plausible infringement or identify actionable accused products), and time‑barred as to damages; it also struck the supplemental filing and found the case exceptional for fee-shifting purposes.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether claims against MEAU are precluded by res judicata | Gharb reasserts the same infringement claims and products | MEAU says Gharb already litigated same cause of action to final judgment in Gharb I | Held: res judicata bars Gharb's MEAU claims |
| Whether complaint states a plausible patent‑infringement claim | Gharb alleges Mitsubishi "stole" his invention and names PLC ALPHA XL | Defendants: complaint lacks factual detail identifying infringing features or U.S. acts; legal conclusions are insufficient | Held: complaint fails Rule 12(b)(6) pleading standards; dismissed |
| Whether plaintiff can recover damages given patent expiration | Gharb seeks damages for alleged sales | Defendants: patent expired 2007; § 286 six‑year recovery window ended 2013 | Held: time for recovery expired; damages unavailable |
| Whether injunctive / procedural relief (strike, fees, anti‑suit injunction) is warranted | Gharb filed supplemental "Lawsuit" against counsel and repeated demands for damages | Defendants: filings are frivolous, repetitive, harassing; seek strike, fees under § 285, and pre‑filing injunction | Held: motion to strike granted; case is "exceptional" → defendants may seek fees; anti‑suit injunction entered (pre‑filing permission required for new suits related to ’654 patent) |
Key Cases Cited
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (Sup. Ct.) (defines "exceptional" case standard for awarding attorney fees under Patent Act)
- Ashcroft v. Iqbal, 556 U.S. 662 (Sup. Ct.) (pleading standard: legal conclusions not accepted; plausibility requirement)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (Sup. Ct.) (plausibility doctrine for Rule 12(b)(6) complaints)
- Taylor v. Sturgell, 553 U.S. 880 (Sup. Ct.) (res judicata bars successive litigation of same claim)
- Unitronics (1989) (R"G) Ltd. v. Gharb, 85 F. Supp. 3d 118 (D.D.C.) (prior D.D.C. decision addressing Gharb’s pattern of meritless suits and imposing restrictions)