United States Court of Appeals 

for the Federal Circuit ______________________

RICHARD SOWINSKI,

Plaintiff-Appellant

v.

CALIFORNIA AIR RESOURCES BOARD,

Defendant-Appellee

______________________

2019-1558

______________________

Appeal from the United States District Court for the 

Northern District of California in No. 5:18-cv-03979-LHK, 

Judge Lucy H. Koh.

______________________

Decided: August 21, 2020

______________________

ANTHONY GRAHAM, Graham & Martin LLP, Newport 

Beach, CA, for plaintiff-appellant. 

 JONATHAN WIENER, Office of the Attorney General, California Department of Justice, San Francisco, CA, for defendant-appellee. Also represented by XAVIER BECERRA;

DAVID A. ZONANA, Oakland, CA; ROBERT DONALD 

SWANSON, Sacramento, CA. 

______________________

Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

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2 SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD

NEWMAN, Circuit Judge.

Dr. Richard Sowinski appeals the dismissal, on the 

ground of res judicata, of his patent infringement suit

against the California Air Resources Board.1 He raises two 

principal arguments: (1) that res judicata does not apply 

because his present complaint seeks damages only for infringement that occurred after conclusion of his prior suits

and (2) that res judicata does not apply because the prior 

suit was resolved on procedural grounds, without reaching 

the merits of infringement. We conclude that the district 

court’s decision is in accordance with law and precedent

and is within the court’s discretionary authority, and is affirmed.

BACKGROUND

The first set of State and Federal lawsuits

On November 24, 2015, Dr. Sowinski filed suit in the 

California Superior Court in Orange County, against the 

California Air Resources Board (“CARB”) and several individual and corporate defendants associated with CARB. 

The three counts of the complaint were (1) infringement of 

United States Patent No. 6,601,033 (“the ’033 patent”), (2) 

violation of California Welfare & Institutions Code elder 

abuse laws, and (3) violation of California Business & Professions Code § 17200 et seq. All three counts are associated with infringement of the ’033 patent, entitled 

“Pollution Credit Method Using Electronic Networks,”

which describes and claims an electronic method and apparatus for validating and trading consumer pollution1 Sowinski v. Cal. Air Res. Bd., No. 18-CV-3979-

LHK, 2018 WL 9841114 (N.D. Cal. Sept. 25, 2018) (“Dist. 

Ct. Op.”); id., (N.D. Cal. Jan. 18, 2019) (Dkt. No. 29) 

(“Recon. Op.”).

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SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD 3

control tax credits. Dr. Sowinski stated that the ’033 patent is infringed by California’s Cap-and-Trade Program 

auctions.

On the motion of a defendant, the suit was removed to 

the United States District Court for the Central District of 

California. Pre-trial proceedings included the filing of several motions to dismiss. After Dr. Sowinski moved to file 

an amended complaint, the parties filed a joint stipulation 

to withdraw the amended complaint and postpone the

hearing on the motions to dismiss. The joint stipulation 

included the statement that the motions to dismiss were 

“potentially case dispositive.” CARB Br. 8.

Dr. Sowinski did not file a response to the motions to 

dismiss. After the period set in the local rules for such response, the district court dismissed the complaint “pursuant to Central District of California Local Rule 7-12, which 

provides that the failure to file a document within a deadline ‘may be deemed consent to the granting or denial of 

the motion.'” Dist. Ct. Op. at *2. The dismissal was with 

prejudice and without leave to amend.

Dr. Sowinski appealed to the Federal Circuit. We recognized Ninth Circuit precedent that failure to oppose a 

motion to dismiss may lead to dismissal with prejudice. 

See, e.g., Owens v. Kaiser Foundation Health Plan, Inc.,

244 F.3d 708, 711, 714 (9th Cir. 2001). We affirmed the 

dismissal, concluding that the district court had considered 

all of the relevant factors as well as the applicable case law,

and that there was no clear error of judgment. We concluded that the dismissal was properly with prejudice because Dr. Sowinski “stipulated that ‘the Motions to Dismiss 

are potentially case dispositive,’ but nevertheless conceded 

and reaffirmed that [he] failed to oppose.” Sowinski v. Cal. 

Air Res. Bd., 720 F. Appx 615 (Fed. Cir. 2017) (“Sowinski 

I”), at 619. Our mandate issued on December 18, 2017.

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4 SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD

The second set of State and Federal lawsuits

On January 31, 2018 Dr. Sowinski filed a complaint in 

the Superior Court of California in Orange County. The 

complaint was substantially identical to his prior complaint, except that he sought damages only for infringement after the decision in Sowinski I. He soon voluntarily 

dismissed the Superior Court action, and on July 2, 2018 

he filed the same complaint in the United States District 

Court for the Northern District of California. The complaint stated the same three counts as in Sowinski I: infringement of the ’033 patent, violation of California elder

abuse laws, and violation of the California Business & Professions Code. CARB was the only named defendant.

Dr. Sowinski filed an application in the district court to 

proceed in forma pauperis. CARB moved for dismissal on 

several grounds: res judicata, Eleventh Amendment immunity from suit, and patent invalidity. The district court 

dismissed the complaint on the ground of res judicata, observing that the dismissal of the same claims in the prior 

litigation against the same defendant “was an adjudication

on the merits.” Dist. Ct. Op. at *2. The court “[found] that 

the Complaint is frivolous and fails to state a claim upon 

which relief can be granted.” Id. at *3.

This appeal followed.

DISCUSSION

In reviewing a ruling of dismissal, “[t]he trial court’s 

dismissal should not be disturbed unless there is a definite 

and firm conviction that the court below committed a clear 

error of judgment in the conclusion it reached upon a 

weighing of the relevant factors.” Ferdik v. Bonzelet, 963 

F.2d 1258, 1260 (9th Cir. 1992) (citations and quotation 

marks omitted). For review of the district court’s dismissal 

on the ground of res judicata, we apply the procedural law 

of the regional circuit, and any aspects unique to patent 

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SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD 5

law are reviewed under Federal Circuit law. Acumed LLC 

v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008).

Res judicata, or claim preclusion, may be based on

failure to prosecute

Res judicata arises when the prior case or claim was 

previously tried and the merits were adjudicated. “In civil 

cases, a claim generally may not be tried if it arises out of 

the same transaction or common nucleus of operative facts 

as another already tried.” Currier v. Virginia, 138 S. Ct. 

2144, 2154 (2018). The Ninth Circuit applies the general 

rule that preclusion applies when the prior suit: “(1) involved the same ‘claim’ or cause of action as the later suit,

(2) reached a final judgment on the merits, and (3) involved 

identical parties or privies.” Mpoyo v. Litton Electro-Optical Sys., 430 F.3d 985, 987 (9th Cir. 2005) (quoting Sidhu 

v. Flecto Co., 279 F.3d 896, 900 (9th Cir. 2002)). See, e.g., 

Stewart v. U.S. Bancorp, 297 F.3d 953, 956 (9th Cir. 2002) 

(same).

Dr. Sowinski argues that the merits of patent infringement were not adjudicated in Sowinski I, for the action was 

dismissed because he did not comply with the district 

court’s local rule for responding to a motion to dismiss. He 

argues that this was not a final judgment on the merits, 

because the dismissal was based on the technicality of a 

local deadline. He states that the imposition of res judicata

on this basis is “manifestly unjust” because there was no 

trial of the question of infringement, and that if an infringement suit is now barred his patent is essentially invalidated because the CARB Cap-and-Trade Program is 

the only known infringing activity.

The district court cited Johnson v. U.S. Department of 

the Treasury, 939 F.2d 820, 825 (9th Cir. 1991) for the holding that “dismissal for failure to prosecute should be 

‘treated as an adjudication on the merits for purposes of 

preclusion.’” Dist. Ct. Op. at *2. On Dr. Sowinski’s request 

for reconsideration, the district court cited the Federal 

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6 SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD

Circuit’s statement in Senju Pharmaceutical Co. v. Apotex 

Inc., 746 F.3d 1344, 1349 (Fed. Cir. 2014) that: “Claim preclusion will generally apply when a patentee seeks to assert the same patent against the same party and the same 

subject matter.” Recon. Op. at 2.

Federal Rule of Civil Procedure 41(b) provides that a 

dismissal for failure to prosecute “operates as an adjudication on the merits,” with exceptions not here applicable:

41(b) Involuntary Dismissal; Effect. If the plaintiff fails to prosecute or to comply with these rules 

or a court order, a defendant may move to dismiss 

the action or any claim against it. Unless the dismissal order states otherwise, a dismissal under 

this subdivision (b) and any dismissal not under 

this rule—except one for lack of jurisdiction, improper venue, or failure to join a party under Rule 

19—operates as an adjudication on the merits. . . .

The Federal Circuit has applied these principles. See, e.g., 

Nystrom v. Trex Co., 580 F.3d 1281, 1284-85 (Fed. Cir. 

2009) (“In its simplest construct, [claim preclusion bars] 

the relitigation of a claim, or cause of action, or any possible 

defense to the cause of action which is ended by a judgment 

of the court.”); Senju, supra.

We conclude that the district court properly applied 

preclusion on this ground.

Preclusion may apply to claims that arise after the 

prior judgment

Dr. Sowinski argues that preclusion cannot apply, as a 

matter of law, because he is seeking damages only for the 

period after conclusion of the Sowinski I litigation. He cites

the principle that: “While the [prior] judgment precludes 

recovery on claims arising prior to its entry, it cannot be 

given the effect of extinguishing claims which did not even 

then exist and which could not possibly have been sued 

upon in the previous case.” Sowinski Br. 3-4. (quoting

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SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD 7

Lawlor v. Nat’l Screen Serv. Corp., 349 U.S. 322, 328 

(1955)). He also cites Ninth Circuit precedent that 

“[f]ailure to gain relief for one period of time does not mean 

that the plaintiffs will necessarily fail for a different period 

of time.” Sowinski Br. 4 (quoting Harkins Amusement Enters., Inc. v. Harry Nace Co., 890 F.2d 181, 183 (9th Cir. 

1989)). However, in those cases the second litigation related to different conduct and different alleged violations 

or litigants, Lawlor, 349 U.S. at 328, or “facts which by the 

defendants’ own concession are at least 10 percent different 

from the facts alleged” in the previous litigation and that 

occurred after the previous litigation, Harkins, 890 F.2d at

183.

Dr. Sowinski alleges no different conduct or acts, and 

the defendant is the same. However, he argues that a 

claim “arising subsequent to a prior action . . . [is] not 

barred by res judicata” even if the new claim is “premised 

on facts representing a continuance of the same course of 

conduct.” Reply Br. 3 (internal quotation marks omitted). 

He cites Storey v. Cello Holdings, LLC, 347 F.3d 370 (2d 

Cir. 2003), for the position that “[c]laims arising subsequent to a prior action need not, and often perhaps could 

not, have been brought in that prior action; accordingly, 

they are not barred by res judicata regardless of whether 

they are premised on facts representing a continuance of 

the same course of conduct.” Id. at 383 (internal quotation 

marks omitted).

It is correct that when an act has been adjudged wrongful, a subsequent suit may be brought if the violation is repeated. However, when the act has been adjudged not 

wrongful, its repetition cannot be challenged in a subsequent suit. In Brain Life, LLC v. Elekta Inc., 746 F.3d 1045 

(Fed. Cir. 2014), the court considered the effect of a prior 

judgment of non-infringement; the court explained that 

preclusion does not apply to new or changed products or 

methods, but does apply when the accused products or 

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8 SOWINSKI v. CALIFORNIA AIR RESOURCES BOARD

methods are essentially the same. Id. at 1054. The court 

summarized:

The principle that, when an alleged infringer prevails in demonstrating noninfringement, the specific accused device(s) acquires the “status” of a 

noninfringing device vis-à-vis the asserted patent 

claims is “[a]n essential fact of a patent infringement claim” .... And, when the devices in the first 

and second suits are “essentially the same,” the 

“new” product(s) also acquires the status of a noninfringing device vis-à-vis the same accusing party 

or its privies.

Id. at 1057 (quoting Foster v. Hallco Mfg. Co., 947 F.2d 469, 

479-80 (Fed. Cir. 1991)). See Lawlor, 349 U.S. at 383 (a 

claim based on new and different facts is not precluded, 

whereas a claim based on the same facts is precluded).

Here the accused CARB activity had been held not to 

be infringing, for Dr. Sowinski’s failure to respond to the 

motions to dismiss was treated as a judgment on the merits. He does not allege any different facts; to the contrary, 

his complaint states that CARB’s on-going activities are 

the same as existed for Sowinski I.

The district court properly held that the dismissal in 

Sowinski I is res judicata, for CARB is charged with the 

same acts of infringement of the same patent. Although 

Dr. Sowinski stresses the inequity that he did not obtain 

resolution of the question of infringement, CARB points out 

that he had the opportunity to do so. The application of 

preclusion “encourages reliance on judicial decisions, bars 

vexatious litigation, and frees the courts to resolve other 

disputes,” Brown v. Felsen, 442 U.S. 127, 131 (1979). The 

district court acted within its discretion and in accordance 

with law, in applying res judicata. The dismissal is affirmed.

AFFIRMED

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