Alcohol Monitoring Systems, Inc. v. Actsoft, Inc. et al

Filing 341

ORDER. The 337 Unopposed Motion and Stipulation to Final Judgment of Non-Infringement is granted. Defendants' 339 Motion for Judgment and Further Relief is granted in part and denied in part. Defendants' 240 Motion for Relief Regardi ng AMS's Breach of Discovery Obligations And Newly Asserted "Advice of Counsel" Defense is denied as moot. Final judgment of non-infringement shall enter against plaintiff and for defendants on defendants' 229 , 230 , 231 coun terclaims as discussed in this Order. Final judgment of non-infringement shall enter against plaintiff Alcohol Monitoring Systems, Inc. and in favor of defendants ActSoft, Inc., Ohio House Monitoring Systems, Inc., and U.S. Home Detention Systems and Equipment, Inc. The jury trial scheduled for 10/31/2011 is vacated. By Judge Philip A. Brimmer on 10/28/11.(mnfsl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 07-cv-02261-PAB-MJW
(Consolidated with 08-cv-01226)
ALCOHOL MONITORING SYSTEMS, INC.,
Plaintiff,
v.
ACTSOFT, INC.,
OHIO HOUSE MONITORING SYSTEMS, INC., and
U.S. HOME DETENTION SYSTEMS AND EQUIPMENT, INC.,
Defendants.

ORDER

This matter comes before the Court on the Unopposed Motion and Stipulation to
Final Judgment of Non-Infringement [Docket No. 337] filed by plaintiff Alcohol
Monitoring Systems, Inc. (“AMS”), Defendants’ Motion for Judgment and Further Relief
[Docket No. 339], and AMS’s Response to Minute Order [Docket No. 340].
Plaintiff requests that the Court “(1) enter final judgment of non-infringement
against AMS and in favor of Defendants and (2) vacate the trial currently set to begin
on October 31, 2011.” Docket No. 337 at 2. Defendants do not oppose this request.
Neither side opposes entry of final judgment of non-infringement nor do they assert that
there remain issues relevant to trial. Therefore, the Court determines that there is no
need to delay entry of a final judgment of non-infringement against plaintiff and in favor
of defendants.

However, because of pending motions in the case, on October 27, 2011, the
Court entered a Minute Order [Docket No. 338] requesting that parties “file an
appropriate motion with the Court regarding defendants’ counterclaims and the two
pending motions.” Docket No. 338. In response to the Court’s Minute Order,
defendants filed a Motion for Judgment and Further Relief [Docket No. 339]. In the
motion, defendants request, in addition to entry of judgment of non-infringement in their
favor, that the Court grant defendants’ Motion for Relief Regarding AMS’s Breach of
Discovery Obligations And Newly Asserted “Advice of Counsel” Defense [Docket No.
240].
That motion, however, sought disclosure of a pre-lawsuit opinion on infringement
by Mr. Stanley Gradisar and was brought in support of a Motion to Declare the Case
Exceptional that defendants have since withdrawn. See Docket No. 240 at 3; Docket
No. 269 at 2; see also Docket No. 339 at 3 (“Defendants are not seeking all of the relief
previously sought in [Docket No. 240][.]”). Therefore, the Court finds the motion is now
moot.
Defendants claim that it is necessary to compel additional disclosure regarding
Mr. Gradisar’s opinion because they “intend to renew their Motion to Declare the Case
Exceptional.” Docket No. 339 at 3. Currently, however, there is no pending Motion to
Declare the Case Exceptional. Disputes regarding attorney fees are collateral issues
that can be decided after judgment. Lorillard Tobacco Co. v. Engida, 611 F.3d 1209,
1218 (10th Cir. 2010). Despite an entry of judgment, the Court retains “jurisdiction to
‘consider collateral issues’ including ‘an award of counsel fees.’” Id. (quoting Cooter &
Gell v. Hartmarx Corp., 496 U.S. 384, 395 (1990)). Consequently, defendants are free
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to renew their request for disclosure in conjunction with any post-judgment motion they
might file pursuant to 35 U.S.C. § 285.1
Accordingly, it is
ORDERED that the Unopposed Motion and Stipulation to Final Judgment of
Non-Infringement [Docket No. 337] is GRANTED. It is further
ORDERED that Defendants’ Motion for Judgment and Further Relief [Docket No.
339] is GRANTED in part and DENIED in part. It is further
ORDERED that Defendants’ Motion for Relief Regarding AMS’s Breach of
Discovery Obligations And Newly Asserted “Advice of Counsel” Defense [Docket No.
240] is DENIED as moot. It is further
ORDERED that final judgment of non-infringement shall enter against plaintiff
and for defendants on defendants’ counterclaims [Docket Nos. 229, 230, 231] as
discussed in this Order. It is further
ORDERED that final judgment of non-infringement shall enter against plaintiff
Alcohol Monitoring Systems, Inc. and in favor of defendants ActSoft, Inc., Ohio House
Monitoring Systems, Inc., and U.S. Home Detention Systems and Equipment, Inc. It is
further
ORDERED that the jury trial scheduled for October 31, 2011 is VACATED.

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Defendants also ask that the Court deny plaintiff’s motion for attorney’s fees
[Docket No. 237]. See Docket No. 339 at 1. The Court will hold that motion in
abeyance as well, resolving it after judgment has entered in this case.
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DATED October 28, 2011.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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