YOLDAS ASKAN, Plaintiff, v. FARO TECHNOLOGIES INC., Defendant Case No: 6:21-cv-1366-PGB-DCI United States District Court, M.D. Florida Filed July 08, 2022 Byron, Paul, United States District Judge ORDER *1 This cause is before the Court on Defendant Faro Technologies, Inc.’s (hereafter, “Faro”) Brief in Support of Preclusion (Doc. 146) and Faro's Motion to Dismiss Complaint with Prejudice Pursuant to Federal Rule of Civil Procedure 37 (Doc. 167). Plaintiff submitted Responses in Opposition to both filings. (Docs. 149, 169). Upon due consideration, Faro's requests are due to be granted.[1] I. BACKGROUND A. The Prior Litigation In June 2018, the Plaintiff sued Faro for its alleged infringement of the following patents: Patent No. 8,705,110 (the “110 Patent”); Patent No. 9,300,841 (the “841 Patent”), and Patent No. 10,032,255 (the “255 Patent”). Askan v. Faro Techs., Inc., Case No. 6:18-cv-01122, Doc. 1 (M.D. Fla. 2018). An Amended Complaint alleging infringement of Claim 1 of each of these three patents was filed in November 2018. Askan, Case No. 6:18-cv-01122, Doc. 59 (M.D. Fla. 2018). Ultimately, Faro filed a Motion for Sanctions, requesting dismissal with prejudice due to Plaintiff's numerous discovery violations. Askan, Case No. 6:18-cv-01122, Doc. 94 (M.D. Fla. 2019). The United States Magistrate Judge considered the request and submitted a report recommending that the action be dismissed. Askan, Case No. 6:18-cv-01122, Doc. 97 (M.D. Fla. 2019). This Court reviewed the Magistrate Judge's Report and Recommendation (“R & R”), adopted the R & R, and dismissed the action with prejudice. Askan, Case No. 6:18-cv-01122, Doc. 103 (M.D. Fla. 2019). The Federal Circuit affirmed. Askan, Case No. 6:18-cv-01122, Docs. 144, 145, 151 (M.D. Fla. Apr. 2020). Thereafter, in April 2021, Plaintiff filed suit against Faro in the Eastern District of Pennsylvania, alleging infringement of same Claims of the ‘841 and ‘255 patents that were at issue in the prior litigation. The case was transferred to the Middle District of Florida and assigned to the undersigned District Judge. (Doc. 32). The Eastern District of Pennsylvania transferred the case to this District because Plaintiff's previous action “involves the same parties, patents, and technology as the present action.” (Doc. 25, p. 2).[2] Accordingly, the Court instructed the parties to brief what effect, if any, the prior dismissal with prejudice has on the instant litigation. (Doc. 141). B. Discovery Violations[3] *2 On May 18, 2022, the Magistrate Judge entered an Order granting Faro's Motion to Compel Responses to its Request for Production. (Doc. 154). Faro served its First Set of Production Requests (“Faro's RFP”) on Plaintiff on October 8, 2021. (Id. at p. 1). The same day, Plaintiff served a request for production (“Plaintiff's RFP”) on Faro “which is identical word by word to [Faro's] present first request for production.” (Id.). Plaintiff did not produce any documents in response to Faro's RFP, and on November 8, 2021, Plaintiff responded to Faro's RFP by asserting the same objection to each of the 77 requests. (Id. at pp. 1–2). Plaintiff's objection asserted that if Faro believes it has complied with Plaintiff's RFP, then Faro has fulfilled its own request. (Id. at p. 2). That is, since the Plaintiff requested the same documents from Faro, any production by Faro satisfied Plaintiff's duty to produce. (Id.). The Magistrate Judge correctly, and very kindly, observed that the “Plaintiff's response to Defendant's RFP, while creative, is wholly deficient.” (Id.). The Magistrate Judge also found the objection to constitute an improper general objection, because it was repeated verbatim to each of Faro's requests. (Id. at p. 3). And, so, the Magistrate Judge ruled Plaintiff's objections were waived except for privilege, and Plaintiff was ordered to respond to Faro's RFP by May 25, 2022. (Id. at p. 5). On May 27, 2022, Plaintiff filed a Motion for Reconsideration of the Magistrate Judge's Order directing him to produce responsive documents by May 25, 2022. (Doc. 156). Plaintiff asserted the same arguments that were rejected by the Magistrate Judge as well as objections, including relevance and proportionality, that were deemed waived. (Id.). On June 3, 2022, nine days after the deadline for producing documents responsive to Defendant's RFP, Plaintiff filed an untimely Motion for Enlargement of Time to comply with the Magistrate Judge's Order. (Doc. 159). Before the Court could rule on the Motion, Plaintiff responded to the Faro's RFP by again requesting production of the same documents requested by the Defendant: Plaintiff YOLDAS ASKAN, by and through its undersigned counsel, and pursuant to Rule 34 of the Federal Rules of Civil Procedure, requests that Defendant FARO Technologies, Inc. produce the documents requested below for copying and inspection at the address 51 Pinfold St, Suite 542, Birmingham B2 4AY, UNITED KINGDOM and via emailing yoldas.askan@gmail.com within thirty days of service. (Doc. 163-2). And Plaintiff once again asserted the same general objection that was rejected by the Magistrate Judge to each of Faro's 77 requests. (Id.). II. LEGAL STANDARDS A. Summary Judgement on Preclusion[4] 1. Summary Judgment To prevail on a summary judgment motion, the movant must show “that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). “An issue of fact is ‘material’ if, under the applicable substantive law, it might affect the outcome of the case. An issue of fact is ‘genuine’ if the record taken as a whole could lead a rational trier of fact to find for the nonmoving party.” Harrison v. Culliver, 746 F.3d 1288, 1298 (11th Cir. 2014). The Court must “view the evidence and all factual inferences therefrom in the light most favorable to the non-moving party and resolve all reasonable doubts about the facts in favor of the non-movant.” Davila v. Gladden, 777 F.3d 1198, 1203 (11th Cir. 2015) (quoting Carter v. City of Melbourne, 731 F.3d 1161, 1166 (11th Cir. 2013) (per curiam)). “A mere ‘scintilla’ of evidence supporting the opposing party's position will not suffice; there must be enough of a showing that the jury could reasonably find for that party.” Brooks v. Cnty. Comm'n of Jefferson Cnty., 446 F.3d 1160, 1162 (11th Cir. 2006) (quoting Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990)). However, “[c]redibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge” when ruling on summary judgment. Strickland v. Norfolk S. Ry. Co., 692 F.3d 1151, 1154 (11th Cir. 2012) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986)). Summary judgment should only be granted “[w]here the record taken as a whole could not lead a rational trier of fact to find for the non-moving party.” Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). 2. Preclusion *3 The doctrine of claim preclusion requires “a judgment on the merits in a prior suit [to] bar[ ] a second suit involving the same parties or their privies based on the same cause of action.” In re PersonalWeb Techs., LLC, 961 F.3d 1365, 1374 (Fed. Cir. 2021) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 (1979)). Claim preclusion does not, however, bar re-litigation where the accused products in the later-filed suit are “essentially the same” as the products accused in the prior suit. Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1299 (Fed. Cir. 2017).[5] Issue preclusion is more restrictive in that its application requires the issue to have been litigated on the merits in the prior suit, and the issue(s) must form a “critical and necessary” part of the prior judgment. See, e.g., Powrzanas v. Jones Util. & Contracting Co., 822 F. App'x 926, 928 (11th Cir. 2020); see also Brown v. R.J. Reynolds Tobacco Co., 611 F.3d 1324, 1332 (11th Cir. 2010) (stating that issue preclusion bars “re-litigating an issue where the same issue has been fully litigated by the same parties or their privies, and a final decision has been rendered by a court”). “In addition to the two traditional pillars of preclusion law—claim and issue preclusion—there is a separate and less frequently invoked doctrine that derives from the Supreme Court's decision in Kessler v. Eldred.” In re PersonalWeb Techs., 961 F.3d at 1376. The Kessler doctrine “fills the gap’ left by claim and issue preclusion” and does not require that the issue of noninfringement or invalidity be “actually litigated.” Id. at 1377. For example, the Kessler doctrine may be applied to voluntary dismissals with prejudice; thus, the Federal Circuit has rejected the contention that the issue of noninfringement must be litigated to invoke the Kessler doctrine. Id. at 1379. Thus, a dismissal with prejudice “resolve[s] the dispute about liability for the alleged patent infringement” and confers “a limited trade right to continue producing, using, and selling” the accused product or device without further harassment by the patent holder. Id. In determining if products are the same or essentially the same with regard to preclusion, the Federal Circuit applies its own precedent. See, e.g., Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008). Under that precedent, the “essentially the same standard” provides that products are “essentially the same” for preclusion purposes if any differences are “merely ‘colorable’ or ‘unrelated to the limitations in the claim of the patent.’ ” Acumed, 525 F.3d at 1324 (citation omitted); Nystrom v. Trex Co., 580 F.3d 1281, 1285 (Fed. Cir. 2009) (explaining that only changes relevant to the patent claims are considered in a preclusion analysis). B. Sanctions: Discovery Abuse Federal Rule of Civil Procedure 37 allows district court judges broad discretion to fashion appropriate sanctions for the violation of discovery orders. Malautea v. Suzuki Motor Co., 987 F.2d 1536, 1542 (11th Cir. 1993). This Rule allows for sanctions when a party fails to comply with a discovery order or fails to attend its own deposition. See FED. R. CIV. P. 37(b)(2)(A), (d)(1)(A)(i). For both offenses, the Rule authorizes a variety of sanctions, such as: striking pleadings; dismissing an action in whole or in part; rendering a default judgment; and holding the disobeying party in contempt of court. FED. R. CIV. P. 37(b)(2)(A)(iii), (b)(2)(A)(v)–(vii), (d)(3); see also United States v. Certain Real Prop. Located at Route 1, Bryant, 126 F.3d 1314, 1317 (11th Cir. 1997). *4 The Supreme Court has also held that the intent behind Rule 37 sanctions is both “to penalize those whose conduct may be deemed to warrant such a sanction, [and] to deter those who might be tempted to such conduct in the absence of such a deterrent.” Roadway Express, Inc. v. Piper, 447 U.S. 752, 763–64 (1980) (quoting Nat'l Hockey League v. Metro. Hockey Club, Inc., 427 U.S. 639, 643 (1976) (per curiam)). This deterrence is necessary because “it is not the court's function to drag a party kicking and screaming through discovery.” Telectron, Inc. v. Overhead Door Corp., 116 F.R.D. 107, 134 (S.D. Fla. 1987). Therefore, Rule 37 provides that “the court must order the disobedient party, attorney advising that party, or both to pay the reasonable expenses, including attorney's fees, caused by the failure, unless the failure was substantially justified, or other circumstances make an award of expenses unjust.” FED. R. CIV. P. 37(b)(2)(C), (d)(3); see also Alyeska Pipeline Serv. Co. v. Wilderness Soc'y, 421 U.S. 240, 258 (1975). Specifically, the sanctions of dismissal or default are seen as a “last resort,” but a party's “willful or bad faith disregard” for discovery orders may call for this type of sanction, especially in cases where the party failed to comply with a court order compelling discovery and warning that the failure to comply might result in sanctions. See Certain Real Prop. Located at Route 1, 126 F.3d at 1317–18; see also BankAtlantic v. Blythe Eastman Paine Webber, Inc., 12 F.3d 1045, 1050 (11th Cir. 1994). Bad faith may be found through “delaying or disrupting the litigation or hampering enforcement of a court order.” Eagle Hosp. Physicians, LLC v. SRG Consulting, Inc., 561 F.3d 1298, 1306 (11th Cir. 2009). The key to unlocking a court's inherent power is a finding of bad faith. Purchasing Power, LLC v. Bluestem Brands, Inc., 851 F.3d 1218, 1223–24 (11th Cir. 2017). III. DISCUSSION A. Preclusion Because Askan, Case No. 6:18-cv-01122 (M.D. Fla. 2018), was dismissed with prejudice, and because the dismissal was affirmed on appeal, the Kessler doctrine mandates that the accused products in that case are treated as non-infringing. In re PersonalWeb Techs., 961 F.3d at 1379. The question, therefore, is whether the accused products in the instant case are “essentially the same” as those in the prior case. See SimpleAir, Inc. v. Google LLC, 884 F.3d 1160, 1170 (Fed. Cir. 2018) (explaining that the Kessler doctrine precludes patent infringement assertions against “ ‘essentially the same’ accused activity” subject to the prior judgment); see also Brain Life LLC v. Eleckta Inc., 746 F.3d 1045, 1058 (Fed. Cir. 2014) (applying the Kessler doctrine when subsequently accused products are “essentially the same” as products subject to a final judgment in a prior case). Faro argues, and the Court agrees, that the infringement contentions submitted by Plaintiff Askan in the 2018 case and in the subject case are identical. Compare (Doc. 146-1) (describing the 2018 infringement contentions) with (Doc. 146-2) (describing the 2021 infringement contentions). Each of the asserted Claims (Claim 1 of the ‘841 patent and Claim 1 of the ‘255 patent) addresses a system that executes a looping process for average distance values in scan data from a laser scanner to achieve a noise free and smoothed result. (Doc. 123-1, col. 127, lines 8–41; Doc. 123-2, col. 13, lines 10–36). Faro contends it is immaterial that the accused product in the 2018 case was the Focus 3D scanner and the accused product in the 2021 case is the SCENE software product and the Focus 3D scanner. (Doc. 146, p. 8 n.3). The Court agrees that Plaintiff cannot side-step the Kessler doctrine by combining the previously adjudicated device with an additional product (the SCENE software) when the infringement contentions are unchanged from the prior case to the instant one. *5 Mr. Juergen Gittiner, Faro's Technical Supervisor for Europe, prepared a declaration in which he concludes, after reviewing the source code for the SCENE software, that “each version of the SCENE code from the 2019 Code to SCENE 2022.0 performs the same general function of controlling the reading of scan data from the FOCUS scanner.” (Doc. 146-3, ¶¶ 5–8). Mr. Gittiner concludes that the changes in the intervening versions of the SCENE code from 2019 to 2022.0 relate only to functions more specific than the general function. (Id. ¶ 8). Accordingly, “[n]either the 2019 Code nor the 2022 Code, nor any other version from the 2019 Code to SCENE versions 2022.0, executes any other algorithm that addresses averaging distance values of scan points.” (Id. ¶ 9). Simply put, Faro's accused SCENE software has not changed any processing steps for averaging scanner distance data since the prior lawsuit. (Id.). The fact that the Focus scanner has added a fast scan mode does not modify distance value averaging, and the accused products in the instant suit are “essentially the same” as those in the prior dismissed action. (Doc. 146-5, ¶ 12). The same is true for the modification to the Focus firmware eliminating scan point values as certain angular positions without changing distance value averaging. (Doc. 146-4, ¶ 13). Plaintiff does not attempt to rebut Faro's factual assertions and opts instead to stand on the argument that the Kessler doctrine does not apply because the 2018 case was not decided on its merits. (Doc. 149, p. 13). Rather than point to material differences between the accused products at issue in the 2018 case and the 2021 case, Plaintiff moves the Court to “[r]ecognize and rule that whether Defendant's products are ‘essentially the same’ or not is not a matter for consideration....” (Id. at p. 14). Unfortunately, the Court is bound to apply the law, in this case the Kessler doctrine, to the facts of the case and to determine whether there is any genuine issue of fact that prevents application of preclusion.[6] The evidence before the Court is uncontroverted and warrants dismissal with prejudice pursuant to the Kessler doctrine. B. Sanctions The sanction of dismissal is properly viewed as a “last resort,” but a party's “willful or bad faith disregard” for discovery orders may call for this type of sanction. See Certain Real Prop. Located at Route 1, 126 F.3d at 1317–18. The instant case is unique in that Plaintiff's prior case was dismissed due to repeated violations of the Court's Orders. Askan, Case No. 6:18-cv-01122, Docs. 97, 103 (M.D. Fla. 2019). The Magistrate Judge's R & R summarized the violations, which included the failure to fully comply with Faro's Request for Production. Askan, Case No. 6:18-cv-01122, Doc. 97 (M.D. Fla. 2019). Notwithstanding an award of attorney's fees in favor of Faro and an Order directing Plaintiff to comply with Faro's Request for Production by January 30, 2019, Plaintiff disobeyed the Order. Id. The Magistrate Judge found the Plaintiff “willfully, in bad faith, and in disregard of his responsibilities failed to comply with the Court's Order.”[7] Askan, Case No. 6:18-cv-01122, Doc. 97 at 6 (M.D. Fla. 2019). The Court reiterates that it recites this history not as a basis or justification for imposing sanctions in the instant case but only to highlight Plaintiff's familiarity with the importance of complying with the Court's Orders and the potential for sanctions to include dismissal. *6 Armed with this knowledge, Plaintiff repeats his pattern and practice of disregarding the Court's Orders and, in the process, “delaying or disrupting the litigation [and] hampering enforcement of a court order,” which forms the predicate for a finding of bad faith. See Eagle Hosp. Physicians, LLC, 561 F.3d at 1306. In response to Faro's RFP, Plaintiff served an RFP that was identical word for word to Faro's RFP. (Doc. 154, p. 1). On the last possible day, Plaintiff responded to the Faro's RFP by objecting to each of the 77 requests and asserting, in pertinent part, the following: [Plaintiff] has served his third request for production on October 8, 2021 which is identical word by word to [Defendant's] present first request for production. Therefore, if [Defendant] believes it complied with [Plaintiff's] request for production then it has fulfilled its own request. (Doc. 154, p. 2) (quoting Doc. 129-2, p. 5). Plaintiff did not produce any documents in response to Faro's RFP, and the Magistrate Judge found the objections constituted improper general objections. (Doc. 154, p. 3). Accordingly, the Magistrate Judge ruled Plaintiff's objections were waived except for privilege, and Plaintiff was ordered to respond to Faro's RFP by May 25, 2022. (Id. at p. 5). After the deadline for producing responsive documents had expired, Plaintiff filed a Motion for Reconsideration, where he repeats the arguments previously rejected by the Court and asserts objections to the relevance of the requested documents and proportionality.[8] (Doc. 156). On June 3, 2022, the Plaintiff filed a belated Motion for Extension of Time to File Response/Reply to comply with the Court's Order.[9] (Doc. 159). Ultimately, Plaintiff responded to the Faro's RFP by resending the same response, consisting of his own RFP, identical to Faro's, and the same general objections previously rejected by the Court. (Doc. 163-2). In so doing, Plaintiff engaged in conduct delaying or disrupting the litigation and hampering enforcement of a Court Order, and the Court finds this conduct to be part of a pattern than began in the prior litigation, resulted in dismissal and the imposition of attorney's fees in favor of the Faro, and which has failed to deter Plaintiff. The intent behind Rule 37 sanctions is both “to penalize those whose conduct may be deemed to warrant such a sanction, [and] to deter those who might be tempted to such conduct in the absence of such a deterrent.” Roadway Express, 447 U.S. at 763–64 (quotation omitted). This deterrence is necessary here, because “it is not the court's function to drag a party kicking and screaming through discovery.” Telectron, Inc., 116 F.R.D. at 134. Plaintiff's willful disobedience of the Court's Order compelling the production of discovery in not excusable, nor is it justified. The Court finds, as it must, that the sanction of dismissal is appropriate and is required under these facts. Moreover, the Court is required to order the disobedient party to pay the reasonable expenses, including attorney's fees, caused by the failure, unless the failure was substantially justified, or other circumstances make an award of expenses unjust. FED. R. CIV. P. 37(b)(2)(C), (d)(3). The Court does not find the failure to comply with its Order was substantially justified or that other circumstances make an award of expenses unjust. IV. CONCLUSION *7 For the foregoing reasons, it is ORDERED AND ADJUDGED, as follows: 1. Faro's Motion to Dismiss the Complaint with prejudice based on preclusion pursuant to the Kessler doctrine (Doc. 146) is GRANTED. 2. Faro's Motion to Dismiss the Complaint with prejudice pursuant to Federal Rule of Civil Procedure 37 (Doc. 167) is GRANTED, and Faro is entitled to expenses, including reasonable attorneys’ fees upon application. 3. All remaining Motions are DENIED AS MOOT. 4. The Clerk of Court is DIRECTED to close the case. DONE AND ORDERED in Orlando, Florida on July 8, 2022. Footnotes [1] The Complaint is due to be dismissed with prejudice on two distinct grounds: for preclusion and as a sanction for violation of the Court's Order. The latter ground for dismissal is not rendered moot by virtue of preclusion. Otherwise, a party who disobeys the Court's Orders would be immune from sanctions simply because he improvidently began the litigation. [2] In response to an Order to Show Cause as to why Plaintiff should not be sanctioned for his failure to disclose the relationship between the instant litigation and Askan, Case No. 6:18-cv-1122 (M.D. Fla. 2018), Plaintiff acknowledged that “in the present case, same parties and same patents however, a different product is involved.” (Doc. 47, ¶ 7). [3] For the sake of context—and not as a basis for imposing sanctions in the instant case—the Court notes that Plaintiff's prior patent infringement suit was dismissed with prejudice for “repeated violations” of the rules and orders of this Court. Askan, Case No. 6:18-cv-01122, Doc. 103 (M.D. Fla. 2019). As Magistrate Judge Irick observed in the first Order to Show Cause entered in the instant case, the “prior action was dismissed ... for violations [which] established a ‘clear record of delay or willful contempt,’ far beyond mere negligence or confusion.” (Doc. 43, p. 1). [4] Faro raised preclusion under the Kessler Doctrine as its Eighth Affirmative Defense. (Doc. 49, pp. 29–32). [5] Faro is correct that the law is not crystal clear on this point and that claim preclusion has been applied where changes in the new accused products are unrelated to the limitations in the claim of the previously litigated patent. (Doc. 146, p. 4 n.2). [6] Plaintiff is no doubt frustrated by the dismissal of his 2018 patent infringement case. But he is reminded that the case was dismissed due to his failure to participate in discovery, causing the Magistrate Judge, this Court, and the Court of Appeals to conclude the conduct amounted to bad faith that warranted the severe sanction of dismissal. Whether fault lies with Plaintiff or his trial counsel is not relevant. But a dismissal with prejudice has consequences, and those consequences are not excused by Plaintiff's accusation that his “previous representatives ... were ultimately corrupted by the Defendant,” or by accusing opposing counsel of deception, or by claiming opposing counsel is biased against him due to his Jewish heritage. (Doc. 149, pp. 8–9). [7] The Magistrate Judge also observed that Plaintiff, via his counsel, failed to appear for a hearing and failed to timely file a case management report. Askan, Case No. 6:18-cv-01122, Doc. 97 at 2 (M.D. Fla. 2019). [8] The Magistrate Judge has not ruled on Plaintiff's Motion for Reconsideration. That said, a motion for reconsideration does not stay a deadline established by Order of the Court especially where, as here, the motion is filed after the deadline passed. Moreover, the Motion for Reconsideration is frivolous. The Plaintiff rehashes arguments previously rejected by the Court and fails to show of one of the following: (1) an intervening change in law, (2) the discovery of new evidence which was not available at the time the Court rendered its decision, or (3) the need to correct clear error or manifest injustice. Fla. Coll. of Osteopathic Med., Inc. v. Dean Witter Reynolds, Inc., 12 F. Supp. 2d 1306, 1308 (M.D. Fla. 1998). “A motion for reconsideration cannot be used to relitigate old matters, raise argument or present evidence that could have been raised prior to the entry of judgment.” Wilchombe v. TeeVee Toons, Inc., 555 F.3d 949, 957 (11th Cir. 2009) (internal quotation marks omitted). In short, the Motion for Reconsideration is merely a delay tactic. [9] The Plaintiff's Motion for Extension of Time was untimely, having been filed after the operative deadline passed.