CSL Silicones, Inc v. Midsun Group Inc

Filing 319

MEMORANDUM AND ORDER (see attached). The parties should exchange and file main briefs addressing the questions and issues raised in the attached Memorandum on or before September 17, 2018. Reply briefs should be exchanged and filed no later than September 24, 2018. The Court will hear oral argument on September 26, 2018, at 10:30 a.m. A separate calendar will issue. Signed by Judge Charles S. Haight, Jr. on 8/3/2018. (Kaczmarek, S.)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF CONNECTICUT

CSL SILICONES, INC.,
Plaintiff/Counterdefendant,

Civil Action No.
3:14-CV-1897 (CSH)

v.
MIDSUN GROUP INC.,

AUGUST 3, 2018
Defendant/Counterclaimant.

MEMORANDUM AND ORDER
HAIGHT, Senior District Judge:
According to the Court's prior Omnibus Ruling on Summary Judgment Motions ("SJ
Ruling"), CSL Silicones, Inc. ("CSL") asked that the Court find that "Midsun's infringement is
intentional and willful." CSL Silicones, Inc. v. Midsun Grp. Inc., 301 F. Supp. 3d 328, 362 (D.
Conn. 2018). Such a finding, it is said, "would affect the measure of damages and fees that CSL
would be entitled to, if it prevailed in this litigation." Id. The Ruling said that since questions of fact
existed as to, inter alia, "whether Midsun acted in good faith in its adoption of the 570 and 579
marks, summary judgment on the issue of willful infringement" is not appropriate. Id.
Next, CSL sought summary judgment on Midsun's affirmative defenses. CSL argued that
"Midsun cannot prevail on its defenses of laches, acquiescence or equitable estoppel due to Midsun's
intentional infringement, or 'unclean hands,' and because Midsun cannot establish the necessary
elements of each defense." Id. at 363 (emphasis added).
These two propositions are stated in the disjunctive. The first proposition is that of unclean
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hands. As to that issue, the Court said in the Ruling: "As an initial matter, the Court addresses CSL's
contention that Midsun's 'unclean hands' bars invocation of its equitable defenses." Id. at 363. The
Ruling then observed that "the Court has already determined that material questions of fact exist as
to whether Midsun intentionally infringed on CSL's marks," so that "whether Midsun may maintain
its equitable defenses, in the light of its potentially dirty hands, is a question to be resolved another
day." Id. at 364. The Court cited a case from the Southern District of New York, which held that
"because a material issue of fact exists as to whether intentional infringement occurred, Defendant
may not prevail on its equitable defenses in summary judgment, because it may not be permitted to
raise them at all." Id. (quoting Emmpresa Cubana Del Tavaco v. Culbro Corp., 213 F. Supp. 2d 247,
273 (S.D.N.Y. 2002)).
Which gives rise to this question: Who decides whether Midsun committed the sort of
intentional infringement which prevents it from raising an equitable defense like laches? The
Court has held that this question cannot be answered summarily; it must be tried; but who will try
it? The Court, as an equitable question, or a jury, as a legal question?
If this particular issue is for the jury, that is presumably because the sixth Polaroid factor
inquires into an allegedly infringing defendant's "good faith," where "the only relevant intent is intent
to confuse" purchasers as to the source of the product. Polaroid Corp. v. Polarad Elecs. Corp., 287
F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820 (1961). The SJ Ruling concluded that "[i]t cannot
be said that Midsun's first use of the marks under the distribution agreements, in connection with
CSL's product, was done in bad faith." 301 F. Supp. 3d at 360. In Polaroid parlance, a defendant
adopts a plaintiff's trademark in "good faith" or "bad faith"; there is no moral middle ground. Thus
the Second Circuit said in Arrow Fastener Co. v. Stanley Works, 59 F.2d 384, 397 (2d Cir. 1995):
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"Prior knowledge of a senior user's trade mark does not necessarily give rise to an inference of bad
faith and may be consistent with good faith."
At this point in its quoted analysis, the SJ Ruling says: "CSL may not prevail on summary
judgment on Midsun's equitable defenses, based on the unclean hands doctrine. However, CSL
asserts other, independent grounds for summary judgment on Midsun's defenses. The Court will
address each defense in turn." 301 F. Supp.3d at 364. The first defense the Court discussed is
laches.
Laches is an equitable defense whose necessary elements are by now well established.
Laches "bars a plaintiff's equitable claim where he is guilty of unreasonable and inexcusable delay
that has resulted in prejudice to the defendant." Ivani Contracting Corp. v. City of New York, 103
F.3d 257, 259 (2d Cir. 1997) (quotation marks and citation omitted). The SJ Ruling cites Second
Circuit authority for this proposition: "To prove a laches defense, a defendant must show that '[1]
that plaintiff had knowledge of defendant’s use of its marks, [2] that plaintiff inexcusably delayed
in taking action with respect thereto, and [3] that defendant will be prejudiced by permitting plaintiff
inequitably to assert its rights at this time.'"301 F. Supp. 3d at 364 (quoting Vaad L'Hafotzas Sichos,
Inc. v. Kehot Publ'n Soc'y, a div. of Merkos L'Inyonei Chinuch, Inc., 697 F. App'x. 63, 64 (2d Cir.
2017)).
On the question of a plaintiff's delay in taking action, Lanham Act trademark infringement
cases like this one look to analogous state limitations statutes. In Federal Treasury Enterprise
Sojuzplodoimport v. Spirits International B.V., 809 F.3d 737 (2d Cir. 2016), the Second Circuit said
in an opinion by Judge Jacobs: "Laches is an equitable defense. Because the Lanham Act does not
prescribe a statute of limitations, federal courts often look to the most appropriate or most analogous
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state statute of limitation to determine when the presumption of laches applies to Lanham Act
claims." Id. at 745-46 (citation and internal quotation marks omitted), cert. denied, 137 S. Ct. 160
(2016).
In Second Circuit laches jurisprudence, the concept of a "presumption of laches" keyed into
an analogous state limitations statute had its genesis in Judge Friendly's seminal opinion in Larios
v. Victory Carriers, Inc., 316 F.2d 63 (2d Cir. 1963), an admiralty case, where Judge Friendly said
that "in deciding whether maritime claims are barred by laches, courts of admiralty will use local
limitation statutes as a rule-of-thumb," which "seems to put it right"; he then delivered this muchcited formula: "When the suit has been brought after the expiration of the state limitation period, a
court applying maritime law asks why the case should be allowed to proceed; when the suit, although
perhaps long delayed, has nevertheless been brought within the state limitation period, the court asks
why it should not be." Id. at 66. That formula remains the touchstone in admiralty cases; Larios was
cited and its formula quoted in Leopard Marine & Trading, Ltd. v. Easy Street Ltd., No. 16-1356CV,--- F.3d ---, 2018 WL 3400524 at *14 (2d Cir. July 13, 2018) (fuel supplier's in rem action
against vessel to enforce maritime lien barred by laches where plaintiff's unreasonable delay
prejudiced defendant shipowner). In Federal Treasury Enterprise, the Second Circuit applied the
formula in a Lanham Act case; Judge Jacobs' opinion phrased it thus:
If the most closely analogous state statute of limitations has not run,
the presumption of laches does not attach and the defendant bears the
burden of proving the defense. But once the analogous state statute
of limitations has run, the burden shifts to the plaintiff to show why
laches should not apply.
809 F.3d at 746 (internal citations omitted).
In the SJ Ruling in this case, I applied that formula to Midsun's laches defense, and
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concluded that "[t]o determine which party has the burden of proof, the Court looks to Connecticut’s
three-year statute of limitations for fraud." 301 F. Supp. 3d at 365. That conclusion places the
burden of proof on the issue of laches upon CSL, for these reasons:
CSL filed its complaint on December 17, 2014, thus the relevant date
for the purposes of laches is December 17, 2011. It is undisputed that
CSL was aware of Midsun’s allegedly infringing conduct by 2000,
when CSL wrote to Midsun to complain of Midsun’s use of the marks
in connection with Midsun’s own product. It therefore follows that
the presumption of laches applies in this matter, and the burden is on
CSL to demonstrate its inapplicability to this case.
Id.
In order to demonstrate the inapplicability of laches, CSL must prove the reverse of the
elements the Second Circuit identified in Ivani. That is to say: CSL must prove that, at the pertinent
times, CSL had no knowledge of Midsun's use of its marks; CSL's delay in taking action with respect
thereto was not unreasonably long; and Midsun was not prejudiced by permitting CSL to sue Midsun
for infringement after that period of time.
At the summary judgment stage, CSL moved inter alia for summary judgment on Midsun's
defense of laches. Midsun argued in response that laches barred CSL's claims as a matter of law. See
301 F. Supp. 3d at 362-63. The Court held that on the record then existing, "CSL has failed to carry
its burden on summary judgment as to Midsun's affirmative defense of laches," in that "CSL has not
rebutted the presumption of prejudice and undue unreasonableness." Id. at 366.
In consequence, the Court denied CSL's motion for summary judgment on Midsun's defense
of laches. The issue remains for trial, with CSL continuing to bear the burden of proving the facts
determinative of the applicability of laches to the case. Two preliminary questions arise: (1) Who
should be the trier of fact, judge or jury; and (2) When during the trial process should that
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determination be made.
These considerations implicate Fed. R. Civ. P. 42(b), which provides:
For convenience, to avoid prejudice, or to expedite and economize,
the court may order a separate trial of one or more separate issues,
claims, crossclaims, counterclaims, or third-party claims. When
ordering a separate trial, the court must preserve any federal right to
a jury trial.
Moore’s text says that Rule 42(b) authorizes "allowing the court to select specified claims or issues
and decide them before proceeding to other matters in the same case," and gives district courts
"discretion to . . . separate for trial virtually any other issue that it thinks proper. In doing so, the
court may act on the motion of any party or sua sponte. . . . The court's power to grant or deny
motions to bifurcate claims and order separate trials is subject to appellate reversal only if there has
been an abuse of discretion." 8 James Wm. Moore et al, Moore’s Federal Practice ("Moore's"), §§
42.20[1], 42.25[a]-[b] (3d ed. 2010).
The advisability of separate trials frequently is presented by Rule 42(b)'s invocation in a case
which includes both legal and equitable claims. See, e.g., Beacon Theatres, Inc. v. Westover, 359
U.S. 500, 511 (1959) ("The district judge simply exercised his inherent discretion, now explicitly
confirmed by the Federal Rules of Civil Procedure, to schedule the trial of an equitable claim in
advance of an action at law. . . . no abuse of discretion is apparent in this case.") (Stewart, J.,
dissenting). A trial judge's discretion in ordering separate trials is limited by the last sentence of
Rule 42(b), a mandatory provision directing the judge to "preserve any federal right to a jury trial."
In the context of a case presenting legal and equitable claims, that duty comes into play if, but only
if, the legal and equitable claims turn upon common issues. Moore's states:
Once an equitable claim has been separated for trial from legal
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claims, and there are common issues between the claims, the legal
claims must be tried before the equitable claims, to avoid any
possibility of infringement on the right to jury trial by the collateral
estoppel or res judicata effect of a court determination of the
equitable claims.
When there are no common issues between the equitable and
legal claims, the order of trial does not affect the right to a jury trial.

8 Moore's § 42.22[3] (footnotes omitted).
The cases Moore's cites for these propositions include Danjaq LLC v. Sony Corp., 263 F.3d
942 (9th Cir. 2001), a copyright infringement case, where the Ninth Circuit observed that "a
constitutional concern may arise when the district court orders that some portions of a case be tried
to the judge and others to a jury," and went on to hold:
Generally speaking, this arrangement is permissible, because only
certain issues carry the right to a jury trial. In particular, the Seventh
Amendment preserves the right to trial by jury of all legal claims,
whereas no right to a jury exists for equitable claims. This is exactly
the situation that presents itself here. McClory has a constitutional
right to a jury trial on his copyright infringement claims, but there is
no right to a jury on the equitable defense of laches. A litigant is not
entitled to have a jury resolve a disputed affirmative defense if the
defense is equitable in nature.
263 F.3d at 962 (citations and internal quotation marks omitted).
Having said this in Danjaq, the Ninth Circuit then acknowledged that "difficulties may arise"
when "the legal and equitable issues overlap and the evidence is intertwined." Id. The intertwining
of issues and evidence can occur in a copyright infringement case, in the Ninth Circuit’s view,
because "the equitable defense of laches is subject to a counterdefense of naked infringement,"
"infringement is a predicate to finding willful infringement, and infringement often presents a
question of fact for the jury." Id. "Thus," the Ninth Circuit continued, "when naked infringement is
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posed as an exception to laches, the bifurcation of laches from infringement may cause constitutional
problems." Id. However, as Danjaq developed in the district court, "there was no such problem."
The district judge conducted a laches hearing at the beginning of the trial, which "did not rule on the
issue of infringement. Instead, it essentially assumed infringement (as do we on appeal) and
addressed willfulness as a matter or law. Because the court ruled as a matter of law, it did not tread
on McClory’s right to a jury trial on infringement." Id. The Ninth Circuit’s conclusion in Danjaq
summarizes its holdings:
[W]e affirm the district court’s determination that Danjaq established
laches; that, as a matter of law, McClory is unable to establish willful
infringement; and that laches bars McClory’s claims in their entirety.
We also conclude that the district court did not abuse its discretion by
bifurcating the trial and by declining to grant a continuance.
Id. at 963.
It should be noted that a case like Danjaq which considered the effect of the laches doctrine
upon an action for copyright infringement would not present itself today. The Ninth Circuit decided
Danjaq in 2001. The Supreme Court has subsequently held that laches is not available as a defense
to claims for copyright infringement brought within the limitations period prescribed under the
Copyright Act. Petrella v. Metro-Goldwyn-Mayer, Inc., --- U.S. ---, 134 S.Ct. 1962 (2014). The
Court extended that ruling to claims for patent infringement in SCA Hygiene Products Aktiebolag
v. First Quality Baby Products, LLC, ---- U.S. ----, 137 S.Ct. 954 (2017), which holds that laches
is not available as a defense to patent infringement claims brought within the Patent Act’s limitation
period. However, Petrella and SCA Hygiene have no effect upon the case at bar, where CSL sues
Midsun under the Lanham Act for trademark infringement. Just last month, the Ninth Circuit said
in Pinkette Clothing, Inc. v. Cosmetic Warriors Limited, 894 F. 3d 1015 (9th Cir. 2018), a Lanham
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Act suit for trademark infringement and cancellation: "CWL [the plaintiff] does not argue that
Petrella and SCA Hygiene preclude application of laches to its trademark infringement
claim—presumably because the Lanham Act prescribes no statute of limitations for such a claim.
Instead, CWL only argues that those cases preclude application of laches to its cancellation claim
because it filed that claim before Pinkette's mark became incontestable." Id. at 1023 (internal citation
omitted). The Ninth Circuit rejected that argument, held that "laches is available as a defense to
CWL’s cancellation claim," and analyzed the laches defense in accordance with the familiar formula:
"If the most analogous state statute of limitations expired before suit was filed, there is a strong
presumption in favor of laches. That presumption is reversed, however, if the most analogous state
statute of limitations expired after suit was filed." Id. at 1025 (internal citations omitted).
Unlike the trial judge in Danjaq, who conducted a "laches hearing" before submitting
anything to a jury and then dismissed the copyright infringement claims in their entirety on the
ground of laches, the trial judge in Pinkette conducted a five-day jury trial; received a jury verdict
finding for plaintiff CWL on its infringement and cancellation legal claims but finding (in an
advisory capacity) for defendant Pinkette on its laches defense; discharged the jury; and conducted
a further evidentiary hearing on the laches defense. The trial judge concluded that on the evidence,
laches applied to bar CWL’s infringement and cancellation claims. The Ninth Circuit affirmed: "The
district court did not abuse its discretion in applying laches to bar CWL’s cancellation and
infringement claims." 894 F.3d at 1029. The Ninth Circuit also noted CWL’s contention at trial that
"the doctrine of unclean hands precludes Pinkette from asserting laches," an equitable doctrine that
may be invoked only on a showing by "clear and convincing evidence" of "wrongfulness, willfulness,
bad faith or gross negligence." 894 F.3d at 1029. Again, the Ninth Circuit affirmed: "The district
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court declined to apply unclean hands here. We review this holding for abuse of discretion. . . . The
district court did not abuse its discretion by declining to apply the doctrine of unclean hands." Id.
The district court's holding on laches disposed of the entire case: "As a result of laches, CWL can
neither enforce its trademark rights against Pinkette's use of the LUSH mark on clothing nor cancel
Pinkette's registration for use of the mark on clothing." Id. at 1030.
The most recent cases on point, including those cited in Moore's, were decided by the Ninth
Circuit, whose decisions are not binding on this Court. I am bound by decisions of the Second
Circuit and Supreme Court.
I held in the SJ Ruling that the most analogous Connecticut statute of limitations had run
before CSL filed its complaint against Midsun. "It therefore follows that the presumption of laches
applies in this matter, and the burden is on CSL to demonstrate its applicability to this case." 301
F. Supp.3d at 365. That holding is the law of the case, and is mandated by the Second Circuit
decisions cited supra. "[O]nce the analogous state statute of limitations has run," the Second Circuit
said in Federal Treasury Enterprise, "the burden shifts to the plaintiff to show why laches should
not apply." 809 F. 3d at 746. The Second Circuit further held that "[t]he ultimate determination of
whether laches bars a plaintiff's claim is within the trial court's discretion," and affirmed the trial
court's dismissal of claims filed "after New York's six-year statute of limitations for fraud had run"
as barred by laches:
The district court further held that FTE unreasonably delayed in
bringing the non-section 32(1) claims and that defendants would be
prejudiced by FTE’s litigation of such claims after this delay. The
district court did not abuse its discretion in concluding that the
presumption of laches arose or that the defendants would be
prejudiced were FTE able to litigate its non-section 32(1) claims.

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Id.
A separate but related question must be considered. It arises out of CSL's contention, noted
supra and in the SJ Ruling, that "Midsun's 'unclean hands' bars invocations of its equitable defenses."
301 F. Supp. 3d at 363. That particular subject is explored by the Second Circuit in Hermes
International v. Lederer de Paris Fifth Avenue, Inc., 219 F.3d 104 (2d Cir. 2000). Plaintiff Hermes,
a manufacturer of leather handbags and accessories, brought a trademark and trade dress
infringement action against sellers of allegedly 'knock-off' products. Plaintiff sought injunctive relief
and monetary damages. The district court held on motions for summary judgment that plaintiff
Hermes, aware of defendants' conduct for a considerable time before filing suit, "had unreasonably
delayed bringing an infringement suit against [defendants] Lederer and Artbag, and thus was barred
by the doctrine of laches from obtaining monetary or injunctive relief against those companies." 219
F.3d at 106.
On appeal, the Second Circuit distinguished between the effect of laches upon plaintiff's
claims for injunctive and monetary relief. The Court of Appeals reversed the district court's
conclusion that laches barred injunctive relief. The Second Circuit reasoned:
[T]he district court misapplied the law governing the doctrine
of laches. It is well established that laches is not a defense against
injunctive relief when the defendant intended the infringement. This
good-faith component of the laches doctrine is part of the
fundamental principle that he who comes into equity must come with
clean hands. Thus, the appellees' intentional infringement is a
dispositive, threshold inquiry that bars further consideration of the
laches defense, not a mere factor to be weighed in balancing the
equities, as the district court did in this case.
[I]t is clear that appellees Lederer and Artbag intentionally
copied Hermès' designs and sought to sell knockoffs of Hermès
originals. Appellees thus intentionally traded off the Hermès name
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and protected products and should not have been entitled to invoke
the doctrine of laches as a defense against Hermès claims for
injunctive relief.
219 F.3d at 107 (citations and internal quotation marks omitted).
However, when the Second Circuit turned its attention in Hermes to the plaintiff's claims for
monetary damages, it did not regard the defendants' unclean hands as a counterdefense to their
defense of laches. The district court's holding that laches barred plaintiff's claims for monetary relief
was reversed in part, but on an entirely different basis. The district court had found that "laches
precluded recovery for seven different allegedly infringing products sold by [defendant] Artbag." Id.
at 109. Hermes successfully argued on appeal that "with respect to Artbag, the laches defense should
have applied to only one product, the Kelly bag, and should not have been applied to six other
products," because "there is no evidence in the record to suggest that it knew that Artbag was selling
knockoff copies of those six products, and thus as a matter of law Artbag could not meet its burden
of proving that Hermès unreasonably delayed taking action against Artbag for selling allegedly
infringing products." Id. The Second Circuit accepted that contention:
Hermès knew of Lederer's sales of seven knockoff products for at
least nine years prior to commencing suit, but that Hermès was aware
of only one knockoff product being sold by Artbag—the Kelly bag.
The district court, however, failed to distinguish between Lederer and
Artbag in holding that laches prevented recovery against both
companies for all seven products. Because there is no evidence that
Hermès knew of Artbag's sales of knockoffs other than the Kelly bag
prior to 1996, we find that the district court's grant of summary
judgment with regard to monetary relief against Artbag should have
applied only to the Kelly bag.
Id. (internal citation omitted).
For present purposes, a notable feature of this Second Circuit decision is that while the

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cleanliness vel non of defendant Artbag's hands is exactly the same, whether one is considering
plaintiff's entitlement to injunctive or monetary relief, unclean hands preclude defendant from
asserting the laches defense against plaintiff's claim for injunctive relief, but have no effect upon
laches barring a claim for monetary relief if defendant can prove the recognized elements of laches
– unreasonable delay by plaintiff in suing and resulting prejudice to defendant. These considerations
are implicated in the case at bar, since CSL seeks both injunctive and monetary relief, and Midsun
contends inter alia that the doctrine of laches bars all of CSL's claims.
A number of governing principles may be gleaned from appellate cases. "Laches is an
equitable defense." Federal Treasury Enterprise, 809 F.3d at 745. "The ultimate determination of
whether laches bars a plaintiff's claim is within the trial court's discretion." Id. at 746. A
presumption of laches exists in this case because CSL did not file its action against Midsun until
after the analogous state statute of limitations had run. Consequently, CSL has the burden of showing
that laches should not apply. It is open to CSL, in that regard, to contend that Midsun committed
intentional infringements of CSL's marks which trigger the clean hands doctrine and preclude
application of the laches doctrine, at least in respect of CSL's claims for injunctive relief. Under the
maxim, "he who comes into equity must come with clean hands," a court of equity may decline to
exercise its equitable powers in favor of a party whose "unconscionable act . . . has immediate and
necessary relation to the equity that he seeks in respect of the matter in litigation." Keystone Driller
Co. v. Gen. Excavator Co., 290 U.S. 240, 245 (1933). A contention of unclean hands, equitable in
nature, is also addressed to the discretion of trial judges sitting in equity, who consider what makes
"for the advancement of right and justice" and "are not bound by formula or restrained by any
limitation that tends to trammel the free and just exercise of discretion." Id. at 245-46.
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In a case where the elements of the defense of laches are proven, or the presumption of laches
is not rebutted, and there is no impediment to the application of laches, a plaintiff's legal and
equitable claims may be dismissed in their entirety. That is what Midsun says should happen in this
case. CSL disputes the proposition.
By means of this Memorandum, the Court sua sponte poses this question: Should Midsun's
defense of laches be bifurcated and tried first before the Court? Rule 42(b) gives the Court
discretion to order a separate and initial trial of that issue, subject to the instruction in the last
sentence of the Rule that "when ordering a separate trial, the court must preserve any federal right
to a jury trial." Fed. R. Civ. P. 42(b). The case at bar pits CSL's legal Lanham Act claims (where a
right to a jury exists) against Midsun's equitable defense of laches (where it does not). Moore’s
treatise and the cases it cites take the position that if there are no "common issues" between the legal
and equitable claims in a particular case, the concern expressed by the last sentence of Rule 42(b)
does not arise. If there are common issues between legal and equitable claims, the resulting concern
is identified by Moore's as one of possible "infringement on the right to jury trial by the collateral
estoppel or res judicata effect of a court determination of the equitable claims." Given these
considerations, the question posed by this case can be rephrased: Would an order by the Court for
a separate trial and initial trial of Midsun's laches defense be impermissible as violating the final
sentence of Rule 42(b)? That question is worth posing, because conceptually (and without
intimating any view on the merits) a decision after bench trial that Midsun's laches defense succeeds
would avoid the expenditure of considerable trial resources ("expedite and economize" are two
praiseworthy objectives identified by Rule 42(b)).
Other questions arising out of these circumstances will undoubtedly occur to counsel. I
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conclude for the present that the underlying question of proper trial court governance is an important
one, and must be resolved before the case can proceed, but the question has not been sufficiently
addressed by the briefs and submissions of counsel to date. For example, CSL's latest reply brief on
the subject of a phased trial argues that Midsun's alleged willful infringement is an element of CSL's
claim for actual damages, and is implicated by the Polaroid "good faith" factor, and CSL's right to
a jury trial on that issue should not be abrogated. Doc. 306-1. The brief is cogently written, but falls
somewhat short of addressing, among other questions, whether these legal issues are "common" to
the issues presented by Midsun's equitable laches defense, so that a constitutional (Seventh
Amendment) concern arises of the sort recognized by the phrasing of Rule 42(b).
My direction is that the issues and questions discussed in this Memorandum be further
briefed by counsel, and the Court will then hear oral argument on the question of structuring the trial.
The hearing for that argument will take place at 10:30 a.m. on September 26, 2018, in the 17th Floor
Courtroom at 157 Church Street, New Haven, Connecticut. Counsel should exchange and file main
briefs on or before September 17, 2018, and exchange and file reply briefs not later than September
24, 2018.
It is SO ORDERED.
Dated: New Haven, Connecticut
August 3, 2018

/s/ Charles S. Haight, Jr.
CHARLES S. HAIGHT, JR.
Senior United States District Judge

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