Masterbuilt Manufacturing Inc v. Bruce Foods Corporation

Filing 45

MEMORANDUM OPINION. Signed by Chief Judge Sharon Lovelace Blackburn on 9/20/2013. (KAM, )

FILED
2013 Sep-20 PM 04:11
U.S. DISTRICT COURT
N.D. OF ALABAMA

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ALABAMA
SOUTHERN DIVISION
MASTERBUILT
MANUFACTURING, INC.,
Plaintiff,
v.
BRUCE FOODS CORPORATION,
Defendant.

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CASE NO. 2:12-cv-3438-SLB

MEMORANDUM OPINION
This case is currently before the court on Bruce Foods Corporation’s (“Bruce Foods”)
Motion for Partial Summary Judgment in Response to Masterbuilt Manufacturing, Inc.’s
(“Masterbuilt”) Motion to Dismiss, (doc. 27),1 and Masterbuilt’s Motion to Strike Bruce
Foods’s Motion for Partial Summary Judgment, (doc. 29). Upon consideration of the record,
the submissions of the parties, the arguments of counsel, and the relevant law, the court is
of the opinion that both motions are due to be denied.
I. SUMMARY JUDGMENT STANDARD
Pursuant to Rule 56(a) of the Federal Rules of Civil Procedure, “[t]he court shall grant
summary judgment if the movant shows 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). Once
the moving party has met its burden, the nonmoving party must go beyond the pleadings and

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Reference to a document number, [“Doc. ___”], refers to the number assigned to each
document as it is filed in the court’s record.

show that there is a genuine issue for trial. Fed. R. Civ. P. 56(c); see Celotex Corp. v.
Catrett, 477 U.S. 317, 324 (1986). A dispute is genuine “if the evidence is such that a
reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986).
II. STATEMENT OF FACTS
In March of 2010, Masterbuilt filed a lawsuit against Bruce Foods in the United States
District Court for the Middle District of Georgia for patent infringement and trade dress
infringement. (See generally doc. 16-1.) Masterbuilt amended its Georgia complaint on
September 10, 2010, adding allegations that Bruce Foods’s “Cajun Injector Electric Smoker,”
“Cajun Injector Electric Smoker Stainless Steel,” and other similarly configured smokers (the
“2010 Accused Smokers”) infringed upon Masterbuilt’s design patent U.S. Patent No.
D616,243 (the “‘243 Patent”) and trade dress. (Doc. 16-2 ¶¶ 83-102 & 118-125.) The
parties resolved the case by entering into a settlement agreement (the “Settlement
Agreement”) in August of 2011. (Doc. 16 ¶¶ 10-11.) Shortly thereafter, Masterbuilt and
Bruce Foods filed a Joint Voluntary Stipulation of Dismissal with Prejudice of All Claims,
thereby dismissing the Georgia lawsuit with prejudice. (Doc. 27-3 at 2-3.)
Masterbuilt commenced this litigation against Bruce Foods on September 24, 2012.
(See doc. 2.) Among other claims, Masterbuilt alleges that Bruce Foods continues to sell
electric smokers that infringe upon the ‘243 Patent and its trade dress. (Doc. 16 ¶¶ 28-37 &
69-74.) According to the First Amended Complaint, Masterbuilt learned in April of 2012

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that Bruce Foods sells electric smokers (the “2012 Accused Smokers”) nearly identical in
appearance to the 2010 Accused Smokers and the design claimed in the ‘243 Patent. (Id. ¶¶
12 & 15.) Masterbuilt later learned that Bruce Foods sells an electric smoker with a
two-latched configuration (the “2-Latched Smoker”) and another smoker (the “Cabela’s
Smoker”) which mirror in appearance the 2010 and 2012 Accused Smokers and the design
claimed in the ‘243 Patent. (Id. ¶¶ 17-18 & 20-21.) Based on these allegations, Masterbuilt
asserts ‘243 Patent infringement claims and trade dress infringement claims relating to the
2012 Accused Smokers, the 2-Latched Smoker, and the Cabela’s Smoker. (Id. ¶¶ 23-35, 6973, 81 & 91.) In addition, Masterbuilt also asserts a ‘243 Patent infringement claim relating
to the 2010 Accused Smokers, which were the subject of the Georgia litigation. (Id. ¶ 35.)
Bruce Foods responded to the First Amended Complaint by filing an Answer and
Counterclaim. (Doc. 19.) On December 21, 2012, Masterbuilt moved to dismiss Counts I-III
of the Counterclaim pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure,
primarily arguing that dismissal was warranted on res judicata grounds. (Docs. 21 & 21-1.)
Specifically, Masterbuilt argued that Counts I-III are virtually identical to claims previously
asserted by Bruce Foods in litigation between the parties before the United States District
Court for the Western District of Louisiana. (Doc. 21-1 at 5-6 & 8-9.) The court has
addressed and denied Masterbuilt’s Motion to Dismiss by separate Memorandum Opinion
and Order. (Docs. 43 & 44.)

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On January 28, 2013, Bruce Foods filed the instant Motion for Partial Summary
Judgment in Response to Masterbuilt’s Motion to Dismiss, arguing that “what is good for the
goose is good for the gander” and “to the extent Masterbuilt argues that the prior dismissal
of the action between the parties in Louisiana gives rise to res judicata, the prior dismissal
of the action between the parties in Georgia must be entitled to the same preclusive effect.”
(Doc. 27 at 3.) Bruce Foods contends that because the parties jointly stipulated to the
dismissal of the Georgia action with prejudice wherein Masterbuilt alleged that the 2010
Accused Smokers and other similarly configured smokers infringed upon the ‘243 Patent and
its trade dress, Masterbuilt’s current ‘243 Patent infringement claims and trade dress
infringement claims are barred by res judicata. (Id. at 5-8.) Masterbuilt has filed a brief in
opposition and a Motion to Strike the Motion for Partial Summary Judgment. (Docs. 29 &
32.)
III. DISCUSSION
A.

MOTION TO STRIKE, (doc. 29)
In its Motion to Strike, Masterbuilt argues that Bruce Foods’s Motion for Partial

Summary Judgment is due to be stricken for procedural reasons. Masterbuilt contends that
(1) Bruce Foods improperly moved for summary judgment under Rule 56(a) of the Federal
Rules of Civil Procedure and (2) the Motion for Partial Summary Judgment fails to comply
with the court’s summary judgment requirements set forth in Appendix II to the Court’s
General Orders.

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Masterbuilt’s first argument relies on the erroneous assumption that the Motion for
Partial Summary Judgment is not actually a motion and, therefore, does not “move for
summary judgment” under Rule 56(a). See Fed. R. Civ. P. 56(a) (“A party may move for
summary judgment, identifying each claim or defense – or the part of each claim or defense
– on which summary judgment is sought.”). Masterbuilt argues that the Motion for Partial
Summary Judgment does not constitute a motion because Bruce Foods filed the Motion for
Partial Summary Judgment as a response to Masterbuilt’s Motion to Dismiss in the court’s
electronic filing system, not as an independent motion. Masterbuilt’s emphasis on the
manner in which Bruce Foods electronically filed the Motion for Partial Summary Judgment
is misplaced, to say the least. Bruce Foods makes abundantly clear in the title and
introductory paragraph of the Motion for Partial Summary Judgment that it is indeed filing
a motion and moving for partial summary judgment. (Doc. 27 at 3 [“Bruce Foods thus
moves this Court for partial summary judgment dismissing the claims asserted in
Masterbuilt’s First Amended Complaint that were previously asserted in the Georgia
action.”].) Although the Motion for Partial Summary Judgment does argue that Masterbuilt’s
claims for infringement of the ‘243 Patent and its trade dress infringement claims should be
dismissed for the same reasons that Masterbuilt argues that Counts I-III of Bruce Foods’s
Counterclaim should be dismissed, the fact remains that the Motion for Partial Summary
Judgment is clearly a motion.

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Masterbuilt’s second argument is also without merit. The Northern District of
Alabama lists Appendix II to the Court’s General Orders on its public website at
http://www.alnd.uscourts.gov as a “sample” of the court’s summary judgment requirements.
Appendix II only becomes binding upon the parties once entered by the court. Because the
court has not yet entered Appendix II in this case, Bruce Foods was not required to adhere
to the summary judgment requirements contained therein.2

Accordingly, Masterbuilt’s

Motion to Strike is due to be denied.
B.

MOTION FOR PARTIAL SUMMARY JUDGMENT, (doc. 27)
As explained in the Memorandum Opinion addressing Masterbuilt’s Motion to

Dismiss, the application of res judicata is somewhat modified where the prior dismissal was
predicated on the parties entering into a settlement agreement. “Where the parties consent
to . . . dismissal based on a settlement agreement,” as did the parties in the Georgia lawsuit,
“the principles of res judicata apply . . . to the matters specified in the settlement agreement,
rather than the original complaint.” Norfolk S. Corp. v. Chevron, U.S.A., Inc., 371 F.3d 1285,
1288 (11th Cir. 2004). It is the terms of the settlement agreement interpreted under
traditional contract principles, not the claims asserted in the original complaint, that govern
the preclusive effect of the prior dismissal. Id. at 1289. Accordingly, the court should “look
to the agreement itself to determine what claims the parties intended to be finally and forever
barred by the dismissal.” Ruple v. Hartford Life & Accident Ins. Co., 340 F. App’x 604, 610
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Although Appendix II is not binding until its entry on the record, parties are strongly
encouraged to comply with its summary judgment requirements at all times.
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(11th Cir. 2009) (citing Norfolk S. Corp., 371 F.3d at 1288) (finding that the appellant did
not carry his burden of showing that res judicata was applicable when he neither submitted
the settlement agreement into evidence nor discussed the contents of the agreement in
argument).
The court denied Masterbuilt’s Motion to Dismiss because Masterbuilt failed to
submit the Settlement Agreement into evidence.3 Instead, Masterbuilt relied exclusively on
the documents filed in the Louisiana lawsuit and the claims asserted in Bruce Foods’s
Counterclaim. Bruce Foods commits the same error here. “[T]he Settlement Agreement
must be placed into evidence before the court can determine with absolute certainty what
claims the Settlement Agreement covers and what claims [Masterbuilt] is barred from
litigating in subsequent lawsuits.” (Doc. 43 at 7 [citing Ruple, 340 F. App’x at 610].)
Consequently, because “what is bad for the goose is bad for the gander,” Bruce Foods’s
Motion for Partial Summary Judgment is due to be denied.
VI. CONCLUSION
Based on the foregoing, the court is of the opinion that Bruce Foods’s Motion for
Partial Summary Judgment, (doc. 27), and Masterbuilt’s Motion to Strike, (doc. 29), are due

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Had Masterbuilt submitted the Settlement Agreement into evidence and the court
considered the agreement, the Motion to Dismiss would have been converted into a motion for
summary judgment. See Fed. R. Civ. P. 12(d). Masterbuilt purposefully excluded the Settlement
Agreement from the attachments to its Motion to Dismiss in order to avoid this conversion. (See
doc. 21-1 at 11.)
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to be denied. An Order in accordance with this Memorandum Opinion will be entered
contemporaneously herewith.
DONE, this 20th day of September, 2013.

SHARON LOVELACE BLACKBURN
CHIEF UNITED STATES DISTRICT JUDGE

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