Case: 22-2117 Document: 55 Page: 1 Filed: 06/21/2023

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

YOLDAS ASKAN, Plaintiff-Appellant

v.

FARO TECHNOLOGIES, INC., Defendant-Appellee ______________________

2022-2117 ______________________

Appeal from the United States District Court for the Middle District of Florida in No. 6:21-cv-01366-PGB-DCI, Judge Paul G. Byron. ______________________

Decided: June 21, 2023 ______________________

YOLDAS ASKAN, Birmingham, United Kingdom, pro se.

ASHLEY BOLAND SUMMER, Nelson Mullins Riley & Scar- borough LLP, New York, NY, for defendant-appellee. Also represented by JOHN BAUER; LLOYD GARRETT FARR, At- lanta, GA; NICOLETTE VILMOS, Orlando, FL. ______________________

Before CHEN, HUGHES, and CUNNINGHAM, Circuit Judges. CHEN, Circuit Judge. Case: 22-2117 Document: 55 Page: 2 Filed: 06/21/2023

2 ASKAN v. FARO TECHNOLOGIES, INC.

Yoldas Askan appeals an order by the United States District Court for the Middle District of Florida that dis- missed his patent-infringement complaint against FARO Technologies, Inc. (FARO) on two independent grounds: (1) as a sanction for failing to comply with a court order, and (2) as precluded under the Kessler doctrine 1. Askan v. FARO Techs. Inc., Case No. 6:21-cv-1366, 2022 WL 12058559, at *1, 4 (M.D. Fla. July 8, 2022) (Order). Be- cause the district court did not abuse its discretion in sanc- tioning Mr. Askan and correctly applied the Kessler doctrine, we affirm. BACKGROUND We previously considered a dismissal with prejudice in a prior litigation between Mr. Askan and FARO because of Mr. Askan’s behavior during discovery. Askan v. FARO Techs., Inc., 809 F. App’x 880, 883–84 (Fed. Cir. 2020) (per curiam) (Askan I). There, Mr. Askan alleged that FARO’s Focus 3D scanner product infringed claims of U.S. Patent Nos. 8,705,110 (’110 patent); 9,300,841 (’841 patent); and 10,032,255 (’255 patent). Id. In eight months, Mr. Askan was sanctioned twice and failed to respond to an order to show cause, timely file a case management report, appear for a hearing, comply with a court order compelling discov- ery, and respond to three separate motions by FARO. Id. According to the district court, “dismissal with prejudice was warranted” because Mr. Askan’s “repeated violations establish[ed] a clear record of delay or willful contempt, far beyond mere negligence or confusion.” Id. at 884 (cleaned up). The district court further found that Mr. Askan had “willfully, in bad faith, and in disregard of his responsibili- ties” failed to comply with its order requiring him to re- spond to FARO’s requests for production (RFPs). Mr. Askan appealed, and we affirmed. Id. at 884–85.

1 This doctrine finds its origin in the Supreme Court’s decision in Kessler v. Eldred, 206 U.S. 285 (1907). Case: 22-2117 Document: 55 Page: 3 Filed: 06/21/2023

ASKAN v. FARO TECHNOLOGIES, INC. 3

In April 2021, Mr. Askan filed a new complaint in the United States District Court for the Eastern District of Pennsylvania, this time alleging that FARO’s Focus 3D scanner product and SCENE software product infringed the same claims of the ’841 and ’255 patents that were at issue in Askan I. Order, 2022 WL 12058559, at *1, 4. The district court transferred the case to the Middle District of Florida under 28 U.S.C. § 1404(a). Id. at *1. After the transfer, FARO served RFPs on Mr. Askan. Id. at *2. The same day, Mr. Askan served RFPs that were “identical word by word” to FARO’s RFPs. Id. Mr. Askan subsequently failed to produce any documents in response to FARO’s RFPs, instead objecting to each RFP with the assertion that because Mr. Askan requested the same doc- uments from FARO, any production by FARO satisfied Mr. Askan’s duty to produce. Id. Finding Mr. Askan’s re- sponses deficient and his objections waived, the magistrate judge ordered Mr. Askan to respond to FARO’s RFPs by May 25, 2022. Id. On May 27, 2022, Askan filed a motion for reconsideration that included the same arguments pre- viously rejected by the magistrate judge and the same ob- jections previously deemed waived. Id. Mr. Askan then filed a motion for enlargement of time to comply with the district court’s order. Id. Before the district court ruled on the motion, however, Mr. Askan responded to FARO’s RFPs by again requesting production of the same docu- ments requested by FARO, again failing to produce any documents, and again asserting the same general objection to each RFP. Id. FARO moved for Rule 37 sanctions, seeking dismissal with prejudice of Mr. Askan’s complaint, and, separately, requested dismissal under the Kessler doctrine. Id. at *1. The district court dismissed Mr. Askan’s complaint with prejudice on both grounds. Id. at *1 n.1, 7. First, as to the Rule 37 sanctions, the district court found that Mr. Askan’s “willful disobedience of the Court’s order compelling the production of discovery” was neither “excusable” nor “justi- fied,” that Mr. Askan “engaged in conduct delaying or Case: 22-2117 Document: 55 Page: 4 Filed: 06/21/2023

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disrupting the litigation and hampering enforcement of a Court Order,” and that “this conduct [was] part of a pattern tha[t] began in the prior litigation, resulted in dismissal and the imposition of attorney’s fees in favor of [FARO], and which has failed to deter [Mr. Askan].” Id. Second, the district court held that the Kessler doctrine applies to a dis- missal with prejudice and does not require that the issue of noninfringement or invalidity be “actually litigated.” Id. at *3–4 (citing In re PersonalWeb Techs. LLC, 961 F.3d 1365, 1376–77, 1379 (Fed. Cir. 2020)). DISCUSSION On appeal, Mr. Askan challenges both the district court’s dismissal under Rule 37 and dismissal under the Kessler doctrine. We review these issues in turn. I. Rule 37 Dismissal We apply regional circuit law when reviewing a district court’s sanction decision. United Constr. Prod., Inc. v. Tile Tech, Inc., 843 F.3d 1363, 1368 (Fed. Cir. 2016). The Elev- enth Circuit’s review of a sanction decision is “sharply lim- ited to an abuse-of-discretion standard and a determination that the findings of the trial court are fully supported by the record.” Circuitronix, LLC v. Kinwong Elec. (Hong Kong) Co., 993 F.3d 1299, 1303 (11th Cir. 2021) (cleaned up). Rule 37 authorizes a district court to “dismiss[] the ac- tion or proceeding in whole or in part” or “render[] a default judgment” against a party that disobeys a discovery order. Fed. R. Civ. P. 37(b)(2)(A). The Eleventh Circuit has found that Rule 37 sanctions are appropriate “only if noncompli- ance with discovery orders is due to willful or bad faith dis- regard for those orders,” such that “the party’s conduct amounts to flagrant disregard and willful disobedience of discovery orders.” United States v. Real Prop. Located at Route 1, 126 F.3d 1314, 1317 (11th Cir. 1997) (cleaned up). The district court did not abuse its discretion in dis- missing Mr. Askan’s complaint due to his discovery Case: 22-2117 Document: 55 Page: 5 Filed: 06/21/2023

ASKAN v. FARO TECHNOLOGIES, INC. 5

misconduct. Mr. Askan failed to produce any documents in response to FARO’s RFPs and counter-served identical RFPs to FARO, claiming that this negated any need for him to produce documents. Order, 2022 WL 12058559, at *2. Despite the magistrate judge’s warning that this re- sponse was deficient, Mr. Askan still did not comply with FARO’s RFPs. Id. Mr. Askan, instead, filed a belated mo- tion for reconsideration and resubmitted the same objec- tions to the RFPs that the district court already found deficient. Id. Worse yet, these discovery violations were a repeat from the prior litigation, and Mr. Askan thus had notice as to the potential consequence of noncompliance. Id. Mr. Askan’s deficient response to FARO’s initial dis- covery requests and his subsequent disregard of the mag- istrate judge’s order to comply amounted to a “bad faith,” “flagrant disregard and willful disobedience of discovery or- ders.” Real Prop. Located at Route 1, 126 F.3d at 1317 (cleaned up). Mr. Askan argues otherwise, contending that he served the identical RFPs on FARO to “get [FARO] to participate in the discovery process” after FARO allegedly ignored Mr. Askan’s emails and communications informally re- questing information from FARO. Appellant’s Br. 39–40. Mr. Askan further asserts the documents that FARO sought corresponded to those from Mr. Askan’s production in the prior litigation. Id. at 40. Mr. Askan’s arguments are unpersuasive. The evi- dence establishes that FARO complied with the court-or- dered discovery process. Mr. Askan offers no support from the record indicating that FARO was required to comply with Mr. Askan’s informal requests for documents and in- formation. Nor does FARO’s alleged noncompliance excuse Mr. Askan from producing materials in response to FARO’s RFPs or from complying with the court’s order. And Mr. Askan’s production in the prior litigation does not ex- cuse Mr. Askan from producing those documents in the current litigation. Indeed, even if FARO may have pos- sessed documents that Mr. Askan produced in the prior Case: 22-2117 Document: 55 Page: 6 Filed: 06/21/2023

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litigation, the district court in the prior litigation held that production to be deficient. Suppl. App. 3385 (Askan v. FARO Techs, Inc., No. 6:18-cv-1122, (M.D. Fla. Dec. 21, 2018), ECF No. 93). In view of Mr. Askan’s discovery violations in the cur- rent litigation, the district court did not abuse its discretion by dismissing Mr. Askan’s complaint under Rule 37. II. Kessler Doctrine We also agree with the district court that the dismissal with prejudice in the prior litigation precluded Mr. Askan’s infringement claims in the current litigation and thus af- firm the district court’s grant of summary judgment in fa- vor of FARO. See Order, 2022 WL 12058559, at *2, 5. We review the grant of summary judgment under the law of the regional circuit in which the district court sits. Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892, 896 (Fed. Cir. 2015). In the Eleventh Circuit, such review is de novo. Ellis v. England, 432 F.3d 1321, 1325 (11th Cir. 2005). In assessing whether summary judgment is proper, we “view all evidence and make all reasonable inferences in favor of the party opposing summary judgment.” Haves v. City of Miami, 52 F.3d 918, 921 (11th Cir. 1995) (citation omitted). We apply the law of the regional circuit to general prin- ciples of claim preclusion but apply Federal Circuit law to determine whether two causes of action for patent infringe- ment are the same in the context of preclusion. In re Per- sonalWeb, 961 F.3d at 1374. Two patent actions are considered the same if the accused devices in the first ac- tion and the accused devices in the second action are “es- sentially the same.” Id. at 1375; Foster v. Hallco Mfg. Co., 947 F.2d 469, 479–80 (Fed. Cir. 1991). We consider the Kessler doctrine to be “a close relative to claim preclusion” but without the temporal limitation that prevents claim preclusion from being “appl[ied] to acts of alleged infringe- ment that occur after the final judgment in the earlier suit.” In re PersonalWeb, 961 F.3d at 1376–77. Case: 22-2117 Document: 55 Page: 7 Filed: 06/21/2023

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Under the Kessler doctrine, “an adjudged non-in- fringer” can “avoid repeated harassment for continuing its business as usual post-final judgment in a patent action where circumstances justify that result.” Id. at 1376. The Kessler doctrine then “grant[s] a ‘limited trade right’ that attaches to the product itself.” Id. at 1378 (quoting Speed- Track, Inc. v. Office Depot, Inc., 791 F.3d 1317, 1323 (Fed. Cir. 2015)). This status also applies to accused products that are “essentially the same” as the products at issue in the earlier patent action. See Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1057–58 (Fed. Cir. 2014). We agree with the district court that (1) the dismissal with prejudice of Mr. Askan’s prior complaint has a preclu- sive effect under the Kessler doctrine and (2) Mr. Askan failed to raise a genuine issue of material fact that the products in the prior litigation and the current litigation were not essentially the same. First, the with-prejudice dismissal in the prior litiga- tion operates as an adjudication of non-liability for in- fringement under the Kessler doctrine. Mr. Askan argues otherwise, contending that the Kessler doctrine does not apply because the dismissal with prejudice in the prior lit- igation did not reach the issue of infringement. See Appel- lant’s Br. 27–29. We expressly rejected this argument in In re PersonalWeb¸ instead holding that the with-prejudice “dismissal operated as an adjudication on the merits for claim preclusion purposes” and therefore “operated as an adjudication of non-liability for infringement for purposes of invoking the Kessler doctrine.” In re PersonalWeb, 961 F.3d at 1376–79; see Hallco Mfg. Co. v. Foster, 256 F.3d 1290, 1297 (Fed. Cir. 2001) (stating that “a dismissal with prejudice . . . is a judgment on the merits”); accord Citi- bank, N.A. v. Data Lease Fin. Corp., 904 F.2d 1498, 1501 (11th Cir. 1990) (holding that in the context of claim preclu- sion, “dismissal of a complaint with prejudice satisfies the requirement that there be a judgment on the merits.”); Hart v. Yamaha-Parts Distributors, Inc., 787 F.2d 1468, 1470 (11th Cir. 1986) (“A dismissal with prejudice operates Case: 22-2117 Document: 55 Page: 8 Filed: 06/21/2023

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as a judgment on the merits unless the court specifies oth- erwise.”). Here, we affirmed the district court’s with-prej- udice dismissal of Mr. Askan’s prior litigation. Askan I, 809 F. App’x at 885. This dismissal, in the context of the Kessler doctrine, operated as an adjudication of non-liabil- ity for infringement. Mr. Askan nevertheless argues that his involuntary dismissal should not have the same preclusive effect as the stipulated dismissal at issue in In re PersonalWeb. See Ap- pellant’s Br. 31–34; Appellant’s Reply Br. 24–25, 28. The stipulation in In re PersonalWeb, however, has no bearing on whether the prior, involuntary dismissal of Mr. Askan’s complaint is covered under the Kessler doctrine. In In re PersonalWeb, we determined that the stipulation had no contingencies, and thus held that the “stipulated dismissal with prejudice . . . operated as an adjudication on the mer- its for claim preclusion purposes.” 961 F.3d at 1379 (citing Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1372–73 (Fed. Cir. 2013)). Like the dismis- sal in In re PersonalWeb, the district court’s prior dismissal of Mr. Askan’s complaint did not carry any contingencies. Thus, this dismissal with prejudice was an adjudication on the merits for claim preclusion purposes, and the fact that it was involuntary is irrelevant to its preclusive effect. Second, we agree that the record below does not estab- lish a genuine dispute that the products in the first and second litigation are “essentially the same.” The district court relied on (1) testimony from FARO’s technical wit- ness explaining that the differences between the products at issue in the prior litigation and the current litigation were immaterial to the asserted patent claims, and (2) Mr. Askan’s identical infringement contentions in both cases. Order, 2022 WL 12058559, at *4–5; see, e.g., Huang v. Huawei Techs. Co., 787 F. App’x 723, 726 & n.1 (Fed. Cir. 2019) (per curiam) (explaining that identical in- fringement charts in prior and subsequent actions con- firmed that the accused products were the same). Mr. Askan did not dispute any of FARO’s factual assertions Case: 22-2117 Document: 55 Page: 9 Filed: 06/21/2023

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in the district court proceedings. Order, 2022 WL 12058559, at *5. And now before us, Mr. Askan does not cite to any part of the record on appeal that undermines or otherwise casts doubt on the evidence supporting the dis- trict court’s reasoning. 2 This unrebutted evidence of record shows that there is no genuine dispute that the products in the prior and current litigations are essentially the same. Mr. Askan asserts that the district court failed to con- sider that the current litigation involves a new product, os- tensibly suggesting that any preclusive effect of the prior litigation does not extend to the accused products in the current litigation. See Appellant’s Br. 30–31, 38, 46–47; Appellant’s Reply Br. 26–28. Mr. Askan did not raise this argument before the district court and, instead, only ar- gued that the Kessler doctrine did not apply because there was no judgment of non-infringement in the prior litiga- tion. See Order, 2022 WL 12058559, at *5 (explaining that Mr. Askan “does not attempt to rebut [FARO]’s factual as- sertions and opts instead to stand on the argument that the Kessler doctrine does not apply because the 2018 case was not decided on the merits”); Suppl. App. 2191–209 (failing to challenge the products being essentially the same in both cases). Thus, Mr. Askan forfeited this argument. In re Google Tech. Holdings LLC, 980 F.3d 858, 862 (Fed. Cir. 2020). To the extent Mr. Askan contends that the district court needed to order further discovery to determine

2 Mr. Askan, in a footnote, refers to a website that he never introduced into the record in the district court pro- ceedings. Appellant’s Br. 38 n.6. We do not consider this website to be part of the record on appeal. Fed. R. App. P. 10(a)(1) (stating the record on appeal contains “the orig- inal papers and exhibits filed in the district court”); see also Biery v. United States, 818 F.3d 704, 710 (Fed. Cir. 2016) (“In general, an appellate court’s review is limited to the record presented at the court below.”). Case: 22-2117 Document: 55 Page: 10 Filed: 06/21/2023

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whether products are essentially the same, Mr. Askan for- feited this argument as well. Federal Rule of Civil Proce- dure 56(d) explains that a party opposing summary judgment may request the court to allow discovery if it “shows by affidavit or declaration that, for specified rea- sons, it cannot present facts essential to justify its opposi- tion.” Fed. R. Civ. P. 56(d); City of Miami Gardens v. Wells Fargo & Co., 956 F.3d 1319, 1324 (11th Cir. 2020) (stating that it is the nonmoving party’s obligation to comply with Rule 56(d) and that a party that fails to comply with Rule 56(d) consents to adjudication of the issues on the ex- isting record). Mr. Askan never made such a request under Rule 56(d), and any argument based on needing further discovery is forfeited. In sum, Mr. Askan in the current litigation seeks to as- sert the same patent claims against essentially the same product at issue in the prior litigation. 3 We agree with the district court that the Kessler doctrine precludes him from doing so.

3 Mr. Askan argues that the district court erred in its characterization of the amended complaint as involving the ’110 patent. Appellant’s Br. 25. The ’110 patent is not implicated in the present litigation, and thus whether the amended complaint included an allegation of infringement with respect to the ’110 patent is not relevant to whether the Kessler doctrine precludes the infringement claims in the present litigation. Compare Suppl. App. 2685–87 (Askan v. FARO Techs., Inc., No. 6:18-cv-01122 (M.D. Fla. June 21, 2018), ECF No. 1) (alleging infringement of the ’110, ’841, and ’255 patents) with Suppl. App. 2917–22 (Askan v. FARO Techs., Inc., No. 6:18-cv-01122 (M.D. Fla. June 21, 2018), ECF No. 59) (alleging infringement of the ’841 and ’255 patents). Case: 22-2117 Document: 55 Page: 11 Filed: 06/21/2023

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CONCLUSION We have considered Mr. Askan’s remaining arguments and find them unpersuasive. 4 We therefore affirm the dis- trict court’s dismissal. AFFIRMED COSTS Costs to FARO.

4 After initial briefing, Mr. Askan filed a Memoran- dum in Lieu of Oral Argument, ECF No. 44. FARO subse- quently filed a Motion to Strike, ECF No. 47, to remove Mr. Askan’s filing from the docket and replace that filing with a redacted version, and Mr. Askan filed a Response to the Motion, ECF No. 54. The portion of Mr. Askan’s Mem- orandum that FARO seeks to redact refers to information that is outside of the record on appeal and that undermines the strong policy interest in keeping the contents of settle- ment negotiations confidential. See Fed. R. App. P. 10(a)(1) (stating the record on appeal contains “the original papers and exhibits filed in the district court”). In addition, Mr. Askan fails to establish how the information is mate- rial to the dispositive issues on appeal. We therefore grant FARO’s Motion to Strike.