St. Clair Intellectual Property Consultants, Inc. v. Samsung Electronics Co.
2013 U.S. Dist. LEXIS 45369
D. Del.2013Background
- St. Clair filed suit against Samsung Electronics USA, Samsung Electronics America, and Samsung Telecommunications America asserting willful infringement of six patents based on Android devices (Samsung I).
- St. Clair voluntarily dismissed Samsung I on January 20, 2012 under Rule 41(a)(1)(A)(i).
- On January 20, 2012, St. Clair also dismissed Samsung II, which asserted the same patents and products.
- The present suit (against SEC, SEA, and STA) reasserts the same six patents and products.
- Defendants moved to dismiss under Rule 12(b)(6) and 41(a)(1)(B) on May 2, 2012.
- The court denied Defendants’ motion, finding the two-dismissal rule not applicable due to lack of sufficient relationship between SE USA and Defendants.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Applicability of Rule 41(a)(1) to Samsung I | SE USA void status is irrelevant; Samsung I counts as a dismissal under Rule 41(a)(1). | SE USA’s void status matters; lack of capacity affects applicability of Rule 41(a)(1). | Rule 41(a)(1) dismissal applies; Samsung I constitutes a prior dismissal against the Defendants. |
| Sufficiency of relationship between SE USA and Defendants for two-dismissal rule | No close relationship; SE USA is defunct and unrelated, so Rule 41(a)(1) should not apply to the others. | There is some interrelation and shared ownership/control justifying privity-like relationship. | Two-dismissal rule inapplicable; insufficient evidence of a close relationship or privity between SE USA and the Defendants. |
| Effect of the two-dismissal rule on this suit | Defendants cannot harness Rule 41(a)(1) to bar this suit given SE USA’s status and lack of relation. | Rule 41(a)(1) should preclude the current suit if prior dismissals cover the same claims. | Two-dismissal rule does not bar the suit; the current action proceeds. |
Key Cases Cited
- Lake at Las Vegas Investors Grp., Inc. v. Pacific Malibu Dev. Corp., 933 F.2d 724 (9th Cir. 1991) (requires some relationship between dismissed party and current party for two-dismissal rule)
- Manning v. South Carolina Dept. of Highway & Public Transp., 914 F.2d 44 (4th Cir. 1990) (privity or substantial identity of parties relevant to two-dismissal rule)
- Surowitz v. Hilton Hotels Corp., 383 U.S. 363 (1966) (two-dismissal rule should be narrowly construed to avoid closing courthouse doors)
- Twombly, Bell Atl. Corp. v., 550 U.S. 544 (2007) (pleading standard requires plausible claims)