Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha
Decision Date | 08 June 1994 |
Docket Number | Civ. A. No. 92-578-RRM. |
Parties | MARS, INCORPORATED, Plaintiff, v. NIPPON CONLUX KABUSHIKI-KAISHA, Defendant. |
Court | U.S. District Court — District of Delaware |
Charles S. Crompton, Jr., William J. Marsden, Jr., and Joanne Ceballos, Potter Anderson & Corroon, Wilmington, DE, John B. Pegram, Peter H. Priest, Wayne S. Breyer, and Jeffrey M. Weinick, Davis Hoxie Faithfull and Hapgood, New York, NY, for plaintiff.
Allen Terrell, Jr., Robert W. Whetzel, Richards, Layton and Finger, Wilmington, DE, Richard H. Zaitlen, David M. Simon, and Steven C. Sereboff, Spensley Horn Jubas & Lubitz, Los Angeles, CA, for defendant.
This is a patent case. The plaintiff, Mars, Incorporated, alleges that the defendant, Nippon Conlux Kabushiki-Kaisha, infringed and induced its subsidiary to infringe Mars' Patent No. 3,198,565. In an earlier action, Mars sued Nippon Conlux's subsidiary, Conlux USA, for patent infringement, and won a judgment of $545,562. See Mars Incorporated v. Conlux USA Corporation, Civil Action No. 90-751-RRM. Pending before the court is Nippon Conlux's Motion for Summary Judgment for Claim Preclusion, Mars' Motion for Reargument, and Mars' Motion to Amend the Complaint. Briefing is complete on these motions, and the court heard oral argument on March 29, 1994. This is the court's decision on these motions.
Mars is the owner of U.S. Patent No. 3,918,565 ("the '565 patent"), which is titled "Method and Apparatus for Coin Selection Utilizing a Programmable Memory." The apparatus described in the '565 patent may be used in a coin-operated device, such as a soda vending machine. When a person places a coin in the vending machine, the patented apparatus will determine if the coin is genuine and the denomination of the coin. See generally Mars Incorporated v. Conlux USA Corporation, 818 F.Supp. 707, 28 U.S.P.Q.2d 1161 (D.Del.1993), aff'd, 16 F.3d 421 (Fed.Cir.1993). Claims 1, 2, 3, and 60 of the '565 patent read as follows:
The defendant, Nippon Conlux is a Japanese corporation. It manufactures the "Premier" coin changer and the "E920" coin discriminator, which is a part of the Premier coin changer. Nippon Conlux sold Premier coin changers to its wholly owned subsidiary, Conlux USA. Conlux USA sold these coin changers in the United States.
In 1990, Mars filed suit against Conlux USA, alleging that Conlux USA infringed the Brief Opposing Claim Preclusion, p. 5 ; Nippon Conlux's Reply to Mars' Brief Opposing Nippon Conlux's Motion for Summary Judgment for Claim Preclusion, p. 5.
Mars filed this suit against Nippon Conlux on October 2, 1992. Mars alleged three causes of action in its Complaint. The first cause of action alleged that Nippon Conlux infringed claims 2, 3, and 60 of the '565 patent and induced Conlux USA to infringe these claims. In the second cause of action, Mars alleged that certain directors of Nippon Conlux and Conlux USA caused and induced Conlux USA to infringe the '565 patent. The second cause of action and the individual defendants were dismissed with prejudice pursuant to a Stipulated Order. In the third cause of action, Mars alleged that Nippon Conlux infringed Japanese Patent No. 1557883. The court dismissed this cause of action by Memorandum Opinion and Order dated June 10, 1993. Mars, Incorporated v. Nippon Conlux Kabushiki-Kaisha, 825 F.Supp. 73, 27 U.S.P.Q.2d 1951 (D.Del.1993). The Federal Circuit affirmed this order. 24 F.3d 1368, 30 U.S.P.Q.2d 1621 (Fed.Cir.1994)
On May 27, 1993, Nippon Conlux filed a Motion for Summary Judgment on the Issue of Direct Infringement. The court granted this motion by Memorandum Opinion and Order of September 28, 1993. Mars, Incorporated v. Nippon Conlux Kabushiki-Kaisha, 855 F.Supp. 670, 1993 WL 383571 (D.Del.1993). Mars requested reargument. The court has permitted extensive rebriefing and reargument.
Nippon Conlux filed a Motion for Summary Judgment for Claim Preclusion on December 27, 1993. Nippon Conlux argues that as a result of the proceedings in the Conlux USA litigation, Mars' claims in these proceedings are barred by the doctrine of claim preclusion, which is also known as res judicata. Mars argues that the motion should be denied because Nippon Conlux has failed to show that the parties and claims at issue here are the same as in Conlux USA.
The first question before this court is whether it should follow the precedents of the Federal Circuit or the Third Circuit. In a patent case, when an issue pertains to a matter not unique to the Federal Circuit's exclusive appellate jurisdiction, this court should follow the discernable law of the Third Circuit. This court, however, will follow the precedent of the Federal Circuit when an issue involves substantive questions coming exclusively within the jurisdiction of the Federal Circuit, the disposition of which would have a direct bearing on the outcome. Mars, Incorporated v. Nippon Conlux Kabushiki-Kaisha, 24 F.3d 1368 (Fed.Cir.1994). Generally, the application of principles of res judicata is not a matter that is committed to the exclusive jurisdiction of the Federal Circuit. Epic Metals Corp. v. H.H. Robertson Co., 870 F.2d 1574, 1576 (Fed.Cir.1989) (), cert. denied 493 U.S. 855, 110 S.Ct. 160, 107 L.Ed.2d 117 (1989); Hartley v. Mentor Corp., 869 F.2d 1469, 1471 n. 1 (Fed.Cir. 1989); see Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 477 n. 7 (Fed.Cir.1991).
Mars appears to argue that in Foster Chief Judge Nies, writing for the Federal Circuit, abandoned the choice of law rule she had announced in 1989 in Hartley. This interpretation is incorrect. In Foster, the question before the Federal Circuit was "not simply whether the Federal Circuit should apply the regional circuit's law of res judicata with respect to a consent decree, but whether the public policies expressed in Lear, Inc. v. Adkins, 395 U.S. 653, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969) override the general res judicata principles which would otherwise apply." Foster, 947 F.2d at 475. The Federal Circuit held that it should pronounce its own interpretation of Lear, but that it would look to regional circuits to determine the general principles of res judicata. Foster, 947 F.2d at 475, 477 n. 1.
The court concludes that it should follow the Third Circuit's precedents on the issue of claim preclusion.
The Supreme Court explained the importance and rationale of the doctrines of claim preclusion and issue preclusion in Montana v. United States:
Application of both doctrines is central to the purpose for which civil courts have been established, the conclusive resolution of disputes within their jurisdictions. To preclude parties from contesting matters that they have had a full and fair opportunity to litigate protects their adversaries from the expense and vexation attending multiple lawsuits,...
To continue reading
Request your trial-
Tyler v. O'Neill, Civ.A. 99-CV-0136.
...in subsequent suits based on a different cause of action involving a party to the prior cause of action. Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha, 855 F.Supp. 673, 677 (D.Del.1994), aff'd, 58 F.3d 616 (Fed.Cir.1995), citing Montana v. U.S., 440 U.S. at 153, 99 S.Ct. at 973. Claim preclu......
-
Tyler v. O'Neill, Civil Action No. 99-CV-0136 (E.D. Pa. 5/26/1999), Civil Action No. 99-CV-0136.
...subsequent suits based on a different cause of action involving a party to the prior cause of action. Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha, 855 F. Supp. 673, 677 (D.Del. 1994), aff'd, 58 F.3d 616 (Fed.Cir. 1995), citing Montana v. U.S., 440 U.S. at 153, 99 S.Ct. at 973. Claim preclu......
-
Syed v. Hercules Inc., CIV.A.01-713-JJF.
...that claims that could have been brought in a prior action may not be litigated in a subsequent action); Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha, 855 F.Supp. 673, 677 (D.Del.1994), aff'd 58 F.3d 616 (Fed.Cir.1995)(holding that a party may not prevail on claims that "it might have but d......
-
Mars Inc. v. Nippon Conlux Kabushiki-Kaisha, KABUSHIKI-KAISH
...judgment against Conlux USA barred Mars from bringing a separate infringement action against Nippon Conlux. Mars, Inc. v. Nippon Conlux Kabushiki-Kaisha, 855 F.Supp. 673 (D.Del.1994). We agree with the district court that under the doctrine of claim preclusion Mars may not obtain relief on ......