On Wednesday, Magistrate Judge Derek T. Gilliland authored a preliminary opinion recommending that Tesla Inc.’s motion to dismiss be denied in the patent infringement suit concerning plaintiff Arsus LLC’s patent entitled “Rollover Prevention Apparatus.” The five-page report and recommendation found Tesla’s claim preclusion arguments in favor of dismissal premature as the inquiry requires more analysis.
The Western District of Texas case is the second filed over the asserted patent. The first, filed in the Northern District of California, was dismissed by stipulation in January 2022 based on the court’s constructions in that case, the opinion recounted. The present case was filed in March 2022 and claims that Tesla’s auto-pilot equipped cars illegally copy Utah-based Arsus’ technology.
According to Tesla, this suit should be disposed of on claim preclusion grounds as it involves the same parties, the same cause of action, and in the former case there was a final judgment on the merits.
Arsus argued otherwise, asserting that the cases do not involve the same cause of action. Instead, the plaintiff contended that unlike the previous claims asserted, the claims now at issue are “not means-plus-function claims, in part because each of them does call for sufficient apparatus structure to avoid interpretation as means-plus-function-claims.”
Judge Gilliland pointed to Federal Circuit precedent holding that where different claims are asserted in a first and second suit, the claim preclusion analysis requires claim comparison. Furthermore, in addition to claim construction, the court said it would need to compare the scope of the claims asserted in both cases to assess the propriety of claim preclusion.
As such, Judge Gilliland ruled the motion “premature and inappropriate for a motion on the pleadings,” while leaving the door open for Tesla to file a motion after claim construction or fact discovery.
Arsus is represented by The Brandt Firm and Wagner, Anderson & Bright PC. Tesla is represented by Fish & Richardson P.C.
