The opinion of the court was delivered by: AMY J. ST. EVE, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff CIVIX-DDI, LLC ("Civix") filed this suit against
Defendant Verizon Information Services, Inc. ("VIS"), Expedia,
Inc. ("Expedia"), and Travelscape, Inc. ("Travelscape") alleging
infringement of various claims of U.S. Patent Nos. 6,385,622
("the '622 patent"), 6,408,307 ("the '307 patent), and 6,415,291
("the 291 patent"), (collectively the "Patents-in-Suit").
Defendants move to dismiss pursuant to Fed.R.Civ.P. 12(b)(6), or
in the alternative to stay, Civix's patent infringement claims.
The Court grants Defendants' motion to dismiss.
In a separate action, currently pending before the Court, Civix
filed suit against several defendants, including VIS, Expedia,
and Travelscape alleging infringement of five patents, including
the Patents-in-Suit. Civix-DDI, LLC v. Motorola et al., No.
03-C-3792, (N.D. Ill.) ("Initial Action"). In that action, Defendants filed a
declaratory judgment counterclaim alleging noninfringement and
invalidity of all of the claims of the Patents-in-Suit. (R. 26-1;
Expedia and Travelscape's Counterclaims; R. 104-1; VIS's
Counterclaims at 31-2.)*fn1
At the Status Hearing on September 9, 2004, Defendants
requested that the Court stay third party discovery on prior art
issues pending the Court's decisions on Defendants' motions for
summary judgment on their licensing defenses. One of the reasons
cited by Defendants for requesting the stay was that they needed
certainty on the identity of claims asserted by Civix prior to
commencing third party discovery. (R. 198-1; Sept. 9, 2004
Transcript at 4:8-23.) In light of Defendants' concerns, the
Court questioned counsel for Civix regarding whether it had
identified the claims it was asserting against Defendants. (Id.
at 8:22-9:2.) Civix represented to Defendants and the Court that
it had identified the claims it was asserting against Defendants:
So, what we're talking about are five patents,
approximately one independent or two independent
claims per patent. So, I think we've tried to focus
it and narrow it so they know. I think the problem,
at least that I'm hearing from them is that they
don't like what we've picked. They say, "Well, you've
expanded, rather than narrowed, the scope." I think
we've narrowed the scope considerably. At least that
was the goal. Your Honor indicated that's where you
wanted us to be, and that's what we did. So, I think,
at least from our perspective, there's nothing else
we can do except tell them which claims ? and
we've done that.
(R. 198-1; Sept. 9, 2004 Transcript at 5:12-25.) In direct
response to the Court's questions, counsel for Civix later
confirmed that its list of asserted claims provided to Defendants
was not contingent on any proposal or deals:
Civix: Well, let me get rid of the deal business. I
don't know about any details, but we're not proposing
any deals. This is what we have. What [counsel] said
in his letter was, "We understand now that this is going to narrow "because we're narrowing" this
is going to narrow the invalidity contentions." If
they don't want to narrow them, that's their
business. Fine. They'll have to live with that at
some point in time in this litigation. But as far as
we're concerned, these are the claims. This is a
summary chart that identifies the claims. We will
have claim charts for every one of those claims,
applying every one of the claims. Most of them we've
done already, but we'll have the rest of them today
or tomorrow at the latest. So, from our perspective
as the plaintiff, we've identified with specificity
what the claims are. We have narrowed it considerably
from the number of claims that existed before. We've
got five patents with nine independent claims.
Dependent claims from those are also identified.
They're more narrow. So, I don't think there's
anything else we can do. And this is the summary
Court: So, it is your position, ?, that putting
aside everything else in the letter, which you handed
to me, the claims at issue are those that are set
forth on Page 2 of your
Civix: That's correct.
Court: And that is not contingent on any deal or
Court: kind of agreement?
Civix: No continencies. If they think there's a
deal that we proposed, we'll eliminate that.
Civix: Just so you understand, the letter says, "we
understand now that this is going to narrow the
validity contentions." They're apparently concerned
that it doesn't. They've cited all the prior art
known to man. That's fine. If they want to do that,
let them go ahead and do it. So, this is what our
position is. No deals. Court: Okay.
(Id. at 7:24-9:20.)
On September 30, 2004, at the close of fact discovery, VIS
served its Supplemental Objections and Response to Civix's
Interrogatory No. 3 identifying additional prior art. (No.
04-C-8031, R. 13-1; Civix's Resp. to Def.'s Mot. to Dismiss, Ex.
B.) On November 22, 2004, Civix served on Defendants its Third
Supplemental Interrogatory Response identifying additional claims
it was asserting that Defendants had infringed. (Id. at Ex. 3.)
On November 30, the Court lifted the stay on third party prior
art discovery. (R. 201-1; Ct.'s Dec. 1, 2004 Minute Order.)
After receiving Civix's newly asserted claims, VIS moved to
strike Civix's Supplemental Interrogatory Response identifying
those new claims. (R. 206-1; VIS's Mot. to Strike.) In response,
Civix withdrew its new claims, indicating it would file a
separate suit asserting those claims. (R. 207-1; Civix's Resp. to
VIS's Mot. to Strike.) Civix proceeded to file this action (the
"Second Action") on December 13, 2004.
The Court issued its Markman Order in the Initial Action on
April 6, 2005. Shortly thereafter, on April 13, 2005, Civix
submitted to the Court a Supplemental Citation of Authority
regarding its amendments to infringement contentions. (R. 275-1;
Pl.'s Supp. Authority.) Civix included as exhibits its
Supplemental Initial Disclosures to Defendants asserting
additional patent claims against Defendants in the Initial
Action. Many of these new claims are included in the patent
claims asserted against Defendants in the Second Action.
Defendants make two primary arguments in support of their
motions to dismiss the Second Action. First, Defendants argue that Fed.R.Civ.P. 13(a)
bars the Second Action because the newly asserted claims were
compulsory counterclaims to Defendants's declaratory judgment
claims in the Initial Action. Second, Defendants argue that the
doctrine of claim splitting bars the Second Action. In the
alternative, if the Court does not dismiss Civix's Second Action,
Defendants request that the Court stay this Second Action pending
resolution of the Initial Action. Civix opposes dismissal and
moves to consolidate the Second Action with the Initial
The purpose of a motion to dismiss pursuant to Rule 12(b)(6) is
to test the legal sufficiency of a complaint, not the merits of
the case. Triad Assocs., Inc. v. Chicago Hous. Auth.,
892 F.2d 583, 586 (7th Cir. 1989). When deciding a motion to dismiss
pursuant to Rule 12(b)(6), the Court views "the complaint in the
light most favorable to the plaintiff, taking as true all
well-pleaded factual allegations and making all possible
inferences from those allegations in his or her favor." Lee v.
City of Chicago, 330 F.3d 456, 459 (7th Cir. 2003).
II. Rule 13 Prohibits Civix From Asserting Its New Claims In
The Second Action
Fed.R.Civ.P. 13(a) provides that:
A pleading shall state as a counterclaim any claim
which at the time of serving the pleading the pleader
has against any opposing party, if it arises out of
the transaction or occurrence that is the subject
matter of the opposing party's claim.
Fed.R.Civ.P. 13(a). Rule 13(a) promotes judicial economy by
avoiding multiple actions ...