Arason Enterprises, Inc. v. CabinetBed Inc.
Filing
117
ORDER by Chief Judge Philip A. Brimmer on 12/23/2019, re: 70 Defendant's Motion for Summary Judgment and for Dismissal With Prejudice of All Claims Involving Either U.S. Patent No. 6,851,139 or CabinetBed's Premium Bed is GRANTED< /b>; 75 Plaintiff's [Corrected and Re-Filed] Motion for SummaryJudgment on Liability for Patent Infringement of Claim No. 1 of the 758 Patent is DENIED. ORDERED that, insofar as plaintiff alleges infringement of the 758 patent b ased upon defendant's Premium Beds, plaintiff's claims are DISMISSED without prejudice. ORDERED that plaintiff's remaining claims are DISMISSED with prejudice. ORDERED that, by January 3, 2020, defendant shall file a written notice indicating whether it intends to pursue what remains of its counterclaim on the 758 patent..(sphil, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Philip A. Brimmer
Civil Action No. 16-cv-03001-PAB-NRN
ARASON ENTERPRISES, INC.,
Plaintiff,
v.
CABINETBED INC.,
Defendant.
ORDER
This matter is before the Court on Defendant’s Motion for Summary Judgment
and for Dismissal with Prejudice of All Claims Involving Either U.S. Patent No.
6,851,139 or CabinetBed’s Premium Bed [Docket No. 70] and Plaintiff’s Motion for
Summary Judgment on Liability for Patent Infringement of Claim No. 1 of the ’758
Patent [Docket No. 75]. The Court has jurisdiction under 28 U.S.C. § 1331.
I. BACKGROUND1
On September 6, 2016, plaintiff Arason Enterprises, Inc. filed suit against
defendant CabinetBed Inc. in the United States District Court for the Northern District of
Ohio alleging patent infringement. Docket No. 5. On December 6, 2016, the case was
transferred to the District of Colorado. Docket No. 1. Plaintiff claims that defendant
has infringed its U.S. Patent No. 7,574,758 (issued Aug. 18, 2009) (the “’758 patent”). 2
1
2
The following facts are undisputed unless otherwise noted.
Plaintiff’s complaint alleges infringement of U.S. Patent No. 6,851,139 (issued
Feb. 8, 2005) (the “’139 patent”), but plaintif f abandoned these claims in its final
Docket No. 5 at 6. The patent relates to a so-called cabinet bed, wherein a folded
mattress is contained inside a piece of furniture and can be deployed as a bed. See
’758 patent, Abstract.
The ’758 patent, entitled “FOLDING CABINET BED WITH TELESCOPING
SLIDE-OUT SUPPORT PLATFORM,” was issued on August 18, 2009 and claimed
priority from U.S. Provisional Patent Application No. 60/670,170 (“the ’170 prov isional”).
Docket No. 70 at 2, ¶ 1; Docket No. 75 at 4, ¶ 14. Plaintif f alleges that defendant’s
Standard Bed (“the accused bed”) infringes upon Claim 1 of the ’758 patent. Docket
No. 75 at 4-5, ¶¶ 17, 22.
’758 patent, Fig. 5.
infringement contentions. Docket No. 75 at 4-5, ¶¶ 16, 22.
2
Defendant’s accused bed contains a drawer at its base (“the extendable drawer”)
that extends approximately eighteen inches from the base. Docket No. 70 at 2-3, ¶ 5.
The accused bed’s front wall and accompanying extension panel extend from the base
to form a sleeping platform that extends approximately fifty-five inches from the bed’s
base. Id.
Docket No. 61-1 at 44-45 (the accused bed with the Court’s annotations).
Defendant has filed a motion for summary judgment, arguing that it is entitled to
judgment on plaintiff’s infringement claim on the basis that (1) defendant’s accused bed
does [not] infringe Claim 1, Docket No. 70 at 9; (2) Claim 1 is not entitled to priority from
the ’170 provisional, id. at 14; and (3) Claim 1 is invalid as obvious under 35 U.S.C.
§ 103, id. at 15. Plaintiff also filed a motion for summary judgment, in which it contends
that the accused bed infringes Claim 1 of the ’758 patent. Docket No. 75 at 11.
3
II. LEGAL STANDARD
The Federal Circuit reviews a district court’s “grant or denial of summary
judgment under the law of the regional circuit.” Lexion Med., LLC v. Northgate Techs.,
Inc., 641 F.3d 1352, 1358 (Fed. Cir. 2011) (citing MicroStrategy Inc. v. Bus. Objects,
S.A., 429 F.3d 1344, 1349 (Fed. Cir. 2005)). Sum mary judgment is warranted under
Federal Rule of Civil Procedure 56 when 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); see Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-50
(1986). A disputed fact is “material” if under the relevant substantive law it is essential
to proper disposition of the claim. Wright ex rel. Trust Co. of Kan. v. Abbott Labs., Inc.,
259 F.3d 1226, 1231-32 (10th Cir. 2001). Only disputes over material facts can create
a genuine issue for trial and preclude summary judgment. Faustin v. City & Cty. of
Denver, 423 F.3d 1192, 1198 (10th Cir. 2005). An issue is “g enuine” if the evidence is
such that it might lead a reasonable jury to return a verdict for the nonmoving party.
Allen v. Muskogee, 119 F.3d 837, 839 (10th Cir. 1997).
Where “the moving party does not bear the ultimate burden of persuasion at trial,
it may satisfy its burden at the summary judgment stage by identifying a lack of
evidence for the nonmovant on an essential element of the nonmovant’s claim.”
Bausman v. Interstate Brands Corp., 252 F.3d 1111, 1115 (10th Cir. 2001) (internal
quotation marks omitted) (quoting Adler v. Wal-Mart Stores, Inc., 144 F.3d 664, 671
(10th Cir. 1998)). “Once the moving party meets this burden, the burden shifts to the
nonmoving party to demonstrate a genuine issue for trial on a material matter.”
4
Concrete Works of Colo., Inc. v. City & Cty. of Denver, 36 F.3d 1513, 1518 (10th Cir.
1994). The nonmoving party may not rest solely on the allegations in the pleadings, but
instead must designate “specific facts showing that there is a genuine issue for trial.”
Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986) (internal quotation marks omitted).
“To avoid summary judgment, the nonmovant must establish, at a minimum, an
inference of the presence of each element essential to the case.” Bausman, 252 F.3d
at 1115. When considering a motion for summary judgment, a court must view the
evidence in the light most favorable to the nonmoving party. Id. However, where, as
here, there are cross motions for summary judgment, the reasonable inferences drawn
from affidavits, attached exhibits, and depositions are rendered in the light most
favorable to the non-prevailing party. Jacklovich v. Simmons, 392 F.3d 420, 425 (10th
Cir. 2004). Furthermore, “[w]hen the parties file cross motions for summary judgment,
we are entitled to assume that no evidence needs to be considered other than that f iled
by the parties, but summary judgment is nevertheless inappropriate if disputes remain
as to material facts.” Atl. Richfield Co. v. Farm Credit Bank of Wichita, 226 F.3d 1138,
1148 (10th Cir. 2000) (internal quotation marks omitted).
III. ANALYSIS
A. Direct Infringement
Plaintiff claims that the accused bed directly infringes Claim 1 of the ’758 patent.
Docket No. 60 at 3. Determining whether direct patent infringement has occurred
“requires a two-step analysis[:] First, the claim must be properly construed to determine
its scope and meaning. Second, the claim as properly construed must be compared to
5
the accused device or process.” Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1361 (Fed. Cir. 2007) (citations omitted). The Court has already construed the parties’
disputed claim terms. See Docket No. 54. As to the second step in the in fringement
analysis, a plaintiff will succeed if it can “show that the accused device contains every
limitation in the asserted claims.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980
(Fed. Cir. 1999). “If even one limitation is missing or not met as claimed, there is no
literal infringement.” Id.
Defendant argues that plaintiff cannot meet its burden of demonstrating direct or
literal infringement of Claim 1 because several elements do not appear in the accused
bed. Specifically, defendant contends that (1) the accused bed does not include an
“extendable structure housed within said base assembly” wherein “said extendable
structure supports said front wall and said extension panel when said front wall and said
extension panel are in the open position,” Docket No. 70 at 10; (2) the accused bed
does not include a “plurality of telescoping rails” that are “sized and configured to
accommodate the size of the front wall and the extension panel,” id. at 11; (3) the
accused bed does not include “at least one support piece . . . siz ed and configured to
prop up said top piece,” id. at 12; and (4) the accused bed does not includ e a “cabinet
assembly” with “an open bottom” and a “base assembly” with “a top piece.” Id. at 13
(internal quotation marks omitted).
“Claim interpretation is a question of law amenable to summary judgment.”
Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387 (Fed. Cir. 1992).
“[D]isagreement over the meaning of a term within a claim does not necessarily create
6
a genuine issue of material fact.” Id.
First, defendant argues that its accused bed does not include an “extendable
structure housed within said base assembly” wherein “said extendable structure
supports said front wall and said extension panel when said front wall and said
extension panel are in the open position.” Docket No. 70 at 10. T he Court did not
construe the term “extendable structure,” finding that it required no construction
because it was defined by the elements it comprises. Docket No. 54 at 23-24.
However, there is no dispute that the accused bed contains an “extendable structure
housed within [the] base assembly” – more specifically, the bed’s extendable drawer
and drawer glides. See Docket No. 70 at 11; Docket No. 83 at 11. Ins tead, the parties’
dispute concerns whether said extendable structure “supports said front wall and said
extension panel when said front wall and said extension panel are in the open position.”
Docket No. 70 at 10 (emphasis added). Defendant contends that the accused bed’s
extendable drawer does not support the bed’s extension panel and, therefore, the
accused bed does not include this limitation. Id. Plaintiff responds that, “[f]or the
evidentiary reasons enunciated and referenced above in Plaintiff’s response to
Defendant’s Statement of Undisputed Material Facts at ¶ 5-6, 3 there is, at the least, a
question of fact for the jury on this issue.” Docket No. 83 at 11. 4
3
Specifically, plaintiff contends that “the 18[-]inch drawer firmly supports the front
wall, which extends approximately 30 inches,” and that “[t]he drawer and the front wall
then act together to support the extension panel that extends to approximately 55
inches.” Docket No. 83 at 3, ¶ 5.
4
Plaintiff also asserts that “nowhere is this limitation found in the patent” and that
defendant “is trying to limit the scope of Plaintiff’s patent by including a limitation that
does not exist in the properly construed claim.” Docket No. 83 at 11. Plaintiff misreads
7
The Court did not construe the term “support” in its claim construction order.
See Docket No. 54. “The terms in a claim are given their ordinary meaning to one of
skill in the art unless it appears from the patent and file history that the terms were used
differently by the inventors.” Intellicall, 952 F.3d at 1387; see also Mars, Inc. v. H.J.
Heinz Co., 377 F.3d 1369, 1373 (Fed. Cir. 2004) (noting that claim terms are given their
ordinary and customary meaning “[u]nless there is an express intent to impart a novel
meaning to the claim terms”); see also Thorner v. Sony Comput. Entm’t Am. LLC, 669
F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must
clearly set forth a definition of the disputed claim term other than its plain and ordinary
meaning.”) “There are only two exceptions to this general rule: 1) when a patentee sets
out a definition and acts as his own lexicographer, or 2) when the patentee disavows
the full scope of a claim term either in the specification or during prosecution.” Thorner,
669 F.3d at 1365.
Each time the word “support” is used in the specification, it is used in a way
consistent with its plain and ordinary meaning – i.e., to prop up or serve as a foundation
for. See, e.g., Docket No. 40-2 (the ’758 patent specification) at 12, col. 3, ll. 40-43
(“The rails and drawers are supported by casters to enable the drawers and rails to be
extended away from the cabinet and to create a level frame to support the sleeping
platform.”); id. at col. 3, ll. 65-67 (“The rails rest on casters on the floor and support the
defendant’s argument as a contention that the “extension panel must provide some
arbitrary level of support basically in pounds per square inch to meet Claim No. 1 of the
‘758 patent.” Id. Defendant’s argument does not involve the level of support provided
by an extendable panel, but, instead, whether the accused bed contains an extendable
structure that provides support to the extension panel at all. This limitation is present in
the ’758 patent. See Docket No. 70-1 at 14, col. 8, ll. 10-11, 35-39.
8
platform off the floor thereby providing further comfort.”); id. at 11, col. 2, ll. 49-52 (“[t]he
telescoping rails provide continuous support for the sleeping platform and are
configured to support the sleeping platform on both sides and in the middle”)
(emphases added). Plaintiff does not address how a person of ordinary skill in the art
(“POSITA”) would define the word “support.” See Docket No. 75; Docket No. 83.
However, defendant’s expert, Mr. Ronald Kemnitzer, indicates that “[a]ny qualified
POSITA would understand that in order for a structure to ‘support’ the ‘extension panel’
(and thus support the sleeping platform) as required by claim 1, it must provide
sufficient support to enable the ‘extension panel’ to function as part of a ‘sleeping
platform.” Docket No. 70-7 at 27, ¶ 43. The Court finds that, based on the use of the
word “support” in Claim 1, and confirmed by its use in the specification, the term
“support” would be understood by one of skill in the art to have its commonly
understood, lay meaning. The Court also finds that, in regard to the term “wherein said
extendable structure supports said front wall and said extension panel,” a POSITA
would understand that the extendable structure must support the extension panel by
allowing it to function as a sleeping platform.
Plaintiff argues that a genuine issue of material fact exists as to whether the
accused bed’s extendable drawer “supports” the bed’s extension panel. In aid of its
argument, plaintiff relies exclusively on the deposition testimony of its expert, Adrian
Slattery, and of defendant’s expert, Mr. Kemnitzer. See Docket No. 83 at 11. Mr.
Slattery states that the extendable drawer “supports” the fully extended extension panel
and opines in his infringement chart that the “support location” is found where the fully
extended drawer meets the accused bed’s front wall:
9
Docket No. 83-10 at 4 (the accused bed with Mr. Slattery’s annotations); see also
Docket No. 83-4 at 14, 69:13-14. Specifically, Mr. Slattery states that “[t]he extendable
structure [i.e., the extendable drawer] supports the front wall and the extendable
structure supports the extension because it’s connected by the hinge”. Docket No. 83-4
at 15, 70:1-3.
Mr. Slattery’s testimony does not create a genuine issue of material fact.
First, infringement opinions “reached using words in ways that contradict their plain
meaning” do not create a material factual dispute for trial. Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1278 (Fed. Cir. 2004). In Dynacore, the Federal
Circuit affirmed the district court’s grant of summary judgment of noninfringement upon
finding that the plaintiff’s experts’ “conclusory assertions . . . that a critical claim
limitation [was] found in the accused device” did not create a genuine issue of fact
10
where the assertions depended on a construction of terms that contravened the words’
plain meaning. Id.
Mr. Slattery’s contention that the extendable drawer “supports” the extension
panel contradicts the plain and ordinary meaning of the term “support.” Claim 1 of the
’758 patent claims an “extendable structure [that] supports said front wall and said
extension panel when said front wall and said extension panel are in the open position .”
Docket No. 40-2 at 14, col. 8, ll. 35-37 (emphasis added). Thus, the extendable drawer
must prop up or serve as a foundation for the extension panel when the extension
panel is fully extended. As admitted by Mr. Slattery, the extendable drawer extends
approximately eighteen inches from the front of the cabinet – approximately one foot
shorter than the fully extended front wall, which extends thirty inches, Docket No. 83-4
at 8, 60:20-21; id. at 9, 61:15-18, and approximately three feet shorter than the fully
extended extension panel, which reaches a distance of approximately fifty-five inches
from the front of the cabinet. Id. at 8, 60:24-25. Mr. Slattery nevertheless opines that
the “support location” is located where the end of the drawer meets the front wall – at
most, eighteen inches from the front of the cabinet, see Docket No. 83-10 at 4, but that
this drawer supports the length of the fully extended extension panel for an additional
three feet. Thus, Mr. Slattery does not claim that the drawer of the accused bed directly
supports the extension panel. Instead, his position is that the draw er directly supports
the front panel and the front panel, via the hinge connecting the front panel to the
extension panel, directly supports the extension panel.
Mr. Slattery admits that, if the accused bed did not have the independent support
11
pieces located underneath the extension panel – see id. (showing the legs that are not
at issue regarding Claim 1) – the bed would not work for its intended purpose.
Specifically, when asked about a bed “[t]hat has support that only extends 18 out of the
55 inches and has nothing else but two hinges to hold it in place,” he stated that “[i]t
would break.” See Docket No. 83-4 at 13, 68:1-4; see also id. at 12, 66:13-17; id. at 13,
68:19-22 (stating that the bed would not serve its intended purpose “if the drawer were
the only structure to support the extension panel”). Mr. Slattery’s use of the word
“support” in the term “wherein said extendable structure supports said front wall and
said extension panel when said front wall and the extension panel are in the open
position” is not consistent with the ordinary meaning of the word to one skilled in the art,
who would understand the term to require that the extendable structure provide
sufficient support to enable the extension panel to function as part of the sleeping
platform. Because Mr. Slattery’s conclusion is only “reached using words in ways that
contradict their plain meaning,” this testimony is insufficient to create a genuine dispute
of material fact. See Dynacore, 363 F.3d at 1278.
Plaintiff cites deposition testimony of Mr. Kemnitzer regarding a hypothetical
question where the accused bed does not have the additional independent support
piece under the extension panel, see Docket No. 83-10 at 4, and where a forty-pound,
three-foot-tall child enters the fully extended bed “on the front two-thirds . . . near the
cabinet assembly.” Docket No. 83-5 at 11-12, 60:11-61:12. Mr. Kem nitzer testified
that, in this hypothetical situation, the bed would not necessarily break. Id. at 61:11-13.
Such testimony, however, does not help plaintiff’s argument that the extendable drawer
“supports” the extension. If this hypothetical child entered the accused bed “on the
12
front two[-]thirds . . . near the cabinet assembly,” i.e., entirely on the extended front wall,
then the extension panel would bear no weight at all. In this hypothetical scenario, the
extension panel – experiencing no real change in force – would not require any
support. The bed’s hypothetical ability to withstand force on its “front two[-]thirds” does
not demonstrate that the extendable drawer “supports” the extension panel for its
intended purpose. Therefore, Mr. Kemnitzer’s answer to this hypothetical question
does not create a genuine issue of material fact “such that it might lead a reasonable
jury to return a verdict for the nonmoving party.” Allen, 119 F.3d at 841.
Because there is no genuine issue of material fact that the accused bed does not
contain all elements found in Claim 1 of the ’758 patent, defendant is entitled to
summary judgment on this claim. Elkay, 192 F.3d at 980. Correspondingly, plaintiff’s
motion for summary judgment on this claim will be denied. Because the Court’s ruling
on this issue is dispositive, the Court declines to address defendant’s second and third
points.
B. Doctrine of Equivalents
It is undisputed that, in plaintiff’s final infringement contentions, plaintiff only
raised allegations that the accused cabinet bed directly infringes Claim 1 of the ’758
patent. Docket No. 83 at 2, ¶ 3. Plaintif f did not raise an argument under the doctrine
of equivalents. See Docket No. 60. However, plaintiff states that its infringement
contentions “did not disclaim the possibility of the jury receiving jury instructions on the
possibility of [it] finding infringement under the doctrine of equivalents, which is a
question of fact for the jury.” Docket No. 83 at 2, ¶ 3.
13
“The Federal Circuit has never explicitly held that a party is required to plead
doctrine of equivalents, and the district courts are split as to whether such express
pleading is required.” Teashot LLC v. Green Mountain Coffee Roasters, Inc., No. 12cv-0189-WJM-KMT, 2014 WL 485876, at *6 (D. Colo. Feb. 6, 2014). In Teashot, the
district court decided that, “[g]iven th[e] lack of clear and binding guidance” from the
Tenth Circuit, it was “unwilling to find waiver based solely on the fact that Plaintiff failed
to include the doctrine of equivalents in its pleadings.” Id. It nevertheless found that
the plaintiff had waived a claim under the doctrine of equivalents because it had failed
to timely disclose it as an infringement theory, waiting until the close of fact discovery
before including it in its supplemental infringement contentions. Id. at *7-8.
Plaintiff disclosed its final infringement contentions on October 29, 2019. Docket
No. 60. In them, plaintiff did not disclose an infringement theory under the doctrine of
equivalents. See id. Moreover, plaintiff has not raised an argument under the doctrine
of equivalents in its response to defendant’s motion to dismiss or in its own motion for
summary judgment. See Docket No. 83; Docket No. 75. The Court finds that, following
the reasoning of Teashot, plaintiff waived any claim under the doctrine of equivalents
and, even if the Court were to assume that plaintiff had not waived the claim, its failure
to make any argument under this theory at the summary judgment stage precludes the
Court from considering the issue.
C. Plaintiff’s Remaining Claims
In its motion for summary judgment, defendant argues that any remaining claims
of plaintiff’s should be dismissed with prejudice. Docket No. 70 at 19. More
14
specifically, defendant notes that plaintiff’s complaint alleges infringement based on
defendant’s Standard Bed – the accused bed – and its Premium Bed. Id.; see also
Docket No. 5 at 5-6, ¶¶ 30, 38; Docket No. 1-2 at 7-8 (def endant’s Premium Bed). On
October 12, 2017, the magistrate judge granted defendant’s [Corrected] Motion to
Strike CabinetBed’s Premium Product Line from Plaintiff’s Infringement Contentions
[Docket No. 34] and struck all allegations concerning defendant’s Premium Beds from
plaintiff’s infringement contentions. Docket No. 42 at 6. Thereafter, in its final
infringement contentions, plaintiff elected to pursue its infringement contentions only on
Claim 1 of the ’758 patent, abandoning any claims related to the ’139 patent. Docket
No. 60 at 2-3.
Plaintiff stipulates to the dismissal with prejudice of its claim alleging infringement
of the ’139 patent. Docket No. 83 at 16. Plaintif f also “acknowledges that [it] cannot
pursue infringement in this case of [its] ’758 patent by the Defendant’s Premium Beds.”
Id. It argues, however, that its claims concerning defendant’s Premium Beds should be
dismissed without prejudice because those claims “have not been litigated on the merits
and thus no dismissal with prejudice concerning them is proper.” Id. at 16-17.
The Court agrees with plaintiff. The Premium Bed allegations were struck
pursuant to defendant’s motion to strike, which was based on plaintiff’s failure to comply
with D.C.COLO.LPtR 4 when plaintiff failed to identify defendant’s premium line of beds
in its claim construction chart. Docket No. 42 at 2-3. The magistrate judge struck
plaintiff’s Premium-Bed-based infringement contentions under Rules 16 and 37 of the
Federal Rules of Civil Procedure and, finding that plaintiff had not demonstrated good
cause for its failure to include a claim chart for the Premium Beds, precluded plaintiff
15
“from modifying its contentions to accuse those products in the f uture.” Id. at 6; see
also O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir.
2006) (stating that the patent rules “are essentially a series of case management
orders” and that a “court may impose any ‘just’ sanction for the failure to obey a
scheduling order, including ‘refusing to allow the disobedient party to support or oppose
designated claims or defenses, or prohibiting that party from introducing designated
matters in evidence.’”) (quoting Fed. R. Civ. P. 16(f)).
Defendant’s motion to strike was referred to the magistrate judge pursuant to 28
U.S.C. § 636(b)(1)(A) and Rule 72 of the Federal Rules of Civil Procedure, which permit
magistrate judges to resolve nondispositive motions. See Docket No. 14; Docket No.
35. While 28 U.S.C. § 636(b)(1)(A) lists a number of dispositive motions – which does
not include a motion to strike – the relevant inquiry in determining whether a motion is
dispositive “focuses not on the title of the motion but rather on the effect of the order.”
ClearOne Commc’ns, Inc. v. Chiang, 2010 WL 1257750, at *2 n.5 (D. Utah Mar. 25,
2010). If the magistrate judge’s striking of plaintiff’s infringement contentions as a
sanction had the effect of dismissing those claims with prejudice, such ruling would
have been dispositive of those claims and would have been beyond the authority of the
magistrate judge. See Fed. R. Civ. P. 72(b)(1) (stating that, when assigned to resolve a
dispositive motion, the magistrate judge must enter a recommended disposition rather
than a dispositive order). Accordingly, the Court construes the order striking plaintiff’s
infringement contentions as a non-dispositive action by the magistrate judge. The
Court dismisses plaintiff’s claims alleging infringement of the ’758 patent by defendant’s
Premium Beds without prejudice.
16
D. Defendant’s Counterclaims
Despite the Court’s ruling on defendant’s motion for summary judgment and its
dismissal of plaintiff’s claims, certain claims still remain. Specifically, defendant has
raised two counterclaims against plaintiff, seeking a declaratory judgment that it did not
infringe upon either of the ’139 or ’758 patents. See Docket No. 8 at 14-15.
As set out above, plaintiff abandoned its claims regarding the ’139 patent. It also
appears that defendant subsequently abandoned its counterclaim seeking a declaratory
judgment as to the ’139 patent. See Docket No. 95 at 2 (stating in final pretrial order
that defendant “asserts a counterclaim seeking a declaratory judgment of
noninfringement” and discussing only the ’758 patent) (emphasis added). Accordingly,
the Court will dismiss defendant’s ’139 patent counterclaim as moot. Wilson v.
Muckala, 303 F.3d 1207, 1215 (10th Cir. 2002) (“[C]laims, issues, defenses, or theories
of damages not included in the pretrial order are waived even if they appeared in the
complaint.”); Expertise Inc. v. Aetna Fin. Co., 810 F.2d 968, 973 (10th Cir. 1987) (“[T]he
pretrial order is the controlling document for the trial.”).
As to defendant’s counterclaim on the ’758 patent, the Court finds that, given its
ruling on defendant’s motion for summary judgment, defendant’s counterclaim is moot
insofar as it seeks a declaratory judgment that it did not infringe Claim 1 of the ’758
patent. The counterclaim, however, is not limited to Claim 1. See Docket No. 8 at 15,
¶¶ 14-15. The Court therefore orders defendant to advise the Court whether it intends
to continue pursuing what remains of its declaratory judgment counterclaim on the ’758
patent.
17
IV. CONCLUSION
For these reasons, it is
ORDERED that Defendant’s Motion for Summary Judgment and for Dismissal
With Prejudice of All Claims Involving Either U.S. Patent No. 6,851,139 or CabinetBed’s
Premium Bed [Docket No. 70] is GRANTED. It is further
ORDERED that Plaintiff’s [Corrected and Re-Filed] Motion for Summary
Judgment on Liability for Patent Infringement of Claim No. 1 of the ’758 Patent [Docket
No. 75] is DENIED. It is further
ORDERED that, insofar as plaintiff alleges infringement of the ’758 patent based
upon defendant’s Premium Beds, plaintiff’s claims are DISMISSED without prejudice. It
is further
ORDERED that plaintiff’s remaining claims are DISMISSED with prejudice. It is
further
ORDERED that, by January 3, 2020, defendant shall file a written notice
indicating whether it intends to pursue what remains of its counterclaim on the ’758
patent.
DATED December 23, 2019.
BY THE COURT:
s/Philip A. Brimmer
PHILIP A. BRIMMER
Chief United States District Judge
18
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?