Novadaq Technologies v. Karl Storz GmbH & Co. K.G. et al

Filing 343

ORDER GRANTING MOTION FOR LEAVE TO FILE AND MOTION FOR RECONSIDERATION OF ORDER GRANTING SUMMARY JUDGMENT OF NO WILLFUL INFRINGEMENT by Magistrate Judge Paul Singh Grewal granting 298 (psglc2S, COURT STAFF) (Filed on 12/11/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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NOVADAQ TECHNOLOGIES, INC.,

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Plaintiff,
v.

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KARL STORZ GMBH & CO. K.G., et al.,

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United States District Court
Northern District of California

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Defendants.

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ORDER GRANTING MOTION FOR
LEAVE TO FILE AND MOTION FOR
RECONSIDERATION OF ORDER
GRANTING SUMMARY JUDGMENT
OF NO WILLFUL INFRINGEMENT
(Re: Docket No. 298)

Plaintiff Novadaq Technologies, Inc. asks the court to revisit its order granting summary
judgment on the issue of willful trademark infringement to Defendants Karl Storz GmbH & Co.
KG and Karl Storz Endoscopy-America, Inc.1 Because the court is persuaded that Novadaq has
identified triable issues of fact, Novadaq’s motion for leave to file and its motion for
reconsideration are GRANTED under Civ. L.R. 7-9(b).

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Case No. 14-cv-04853-PSG

In its order, the court found that “the facts that Novadaq cites could not lead a reasonable
jury to find that Karl Storz deliberately intended to deceive customers.”2 As Novadaq points out,
however, “[w]illfulness [also] can be established by evidence of knowing conduct or by evidence
that the defendant acted with ‘an aura of indifference to plaintiff's rights’—in other words, that the
defendant willfully blinded himself to facts that would put him on notice that he was infringing
another’s trademarks, having cause to suspect it.”3 Karl Storz does not dispute Novadaq’s

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See Docket No. 292 at 11-13; Docket No. 297-3.

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Docket No. 292 at 12.

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Philip Morris USA Inc. v. Liu, 489 F. Supp. 2d 1119, 1123 (C.D. Cal. 2007) (quoting Philip
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Case No. 14-cv-04853-PSG
ORDER GRANTING MOTION FOR LEAVE TO FILE AND MOTION FOR
RECONSIDERATION OF ORDER GRANTING SUMMARY JUDGMENT OF NO WILLFUL
INFRINGEMENT

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contention that Karl Storz employees, including its head Dr. Sybill Storz, were aware of

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Novadaq’s marks.4 Further, as the court’s order recognized, Karl Storz executives knew about

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“the possibility that their products might be confused with Novadaq’s.”5 Karl Storz employee

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William Schnorr even expressed concern that Karl Storz might be “hit with a lawsuit” if it stuck

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with the SPIES name.6 Even if this evidence does not suggest that Karl Storz acted with

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“deliberate intent to deceive,”7 it still could lead a reasonable jury to conclude that Karl Storz was

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willfully blind to the possibility that it would infringe Novadaq’s mark. The issue of willful

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infringement must go before the jury.8

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United States District Court
Northern District of California

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Morris USA v. Banh, Case No. 03-cv-04043, 2005 WL 5758392, at *6 (C.D. Cal. Jan. 14, 2005));
see also Chanel, Inc. v. Italian Activewear of Fla., Inc., 931 F.2d 1472, 1476 (11th Cir. 1991)
(holding that willful blindness could provide requisite intent or bad faith and is generally a
question of fact); Monster Cable Prods., Inc. v. Discovery Commc’ns, Inc., Case No. 03-cv-03250,
2004 WL 2445348, at *9 (N.D. Cal. Nov. 1, 2004) (“[T]here is presumably an intent to deceive
‘where the alleged infringer adopted his mark with knowledge, actual or constructive, that it was
another’s trademark.’” (quoting Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d
1036, 1059 (9th Cir. 1999))); cf. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112 (2d Cir.
2001) (“Willfulness in [the copyright infringement] context means that the defendant ‘recklessly
disregarded’ the possibility that ‘its conduct represented infringement.’” (quoting Hamil Am. Inc.
v. GFI, 193 F.3d 92, 97 (2d Cir. 1999)).
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See Docket No. 271 at 84:12-16.

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Docket No. 292 at 12 (citing Docket No. 247-8 at 72:22-74:17, 111:9-112:12); see also Docket
No. 248-59.

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Docket No. 247-27.

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Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1074 (9th Cir. 2015)
(quoting Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993), superseded by
statute on other grounds, Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat.
218).

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Civ. L.R. 7-9(b)(3) requires the party seeking reconsideration to have presented the legal
argument to the court before the court issued the order at issue. Novadaq specifically raised the
argument of willful blindness to the court in oral arguments on the motion for summary judgment.
See Docket No. 271 at 78:17-80:25.
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Case No. 14-cv-04853-PSG
ORDER GRANTING MOTION FOR LEAVE TO FILE AND MOTION FOR
RECONSIDERATION OF ORDER GRANTING SUMMARY JUDGMENT OF NO WILLFUL
INFRINGEMENT

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SO ORDERED.

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Dated: December 11, 2015

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_________________________________
PAUL S. GREWAL
United States Magistrate Judge

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United States District Court
Northern District of California

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Case No. 14-cv-04853-PSG
ORDER GRANTING MOTION FOR LEAVE TO FILE AND MOTION FOR
RECONSIDERATION OF ORDER GRANTING SUMMARY JUDGMENT OF NO WILLFUL
INFRINGEMENT