SWINGAWAY SPORTS PRODUCTS, INC. v. ESCALADE INCORPORATED
ENTRY denying Escalade's 38 Motion to Dismiss for Lack of Prosecution (see Entry). Signed by Judge Richard L. Young on 6/7/2013. (PG)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
SWINGAWAY SPORTS PRODUCTS,
ESCALADE, INC., d/b/a ESCALADE
ENTRY ON DEFENDANT’S MOTION TO DISMISS FOR
FAILURE TO PROSECUTE
Plaintiff, SwingAway Sports Products, Inc. (“SwingAway”), filed this civil action
against Defendant, Escalade, Inc., d/b/a Escalade Sports (“Escalade”), alleging patent
infringement, reverse palming-off in violation of the Lanham Act, 15 U.S.C. §
1125(a)(1)(A), violations of the Illinois Deceptive Trade Practices Act, and tortious
interference with prospective economic advantage. Escalade now moves to dismiss the
case under Federal Rule of Civil Procedure 41(b) and Local Rule 41.1 due to
SwingAway’s failure to prosecute. For the reasons set forth below, the court DENIES
SwingAway makes and sells highly-acclaimed, innovative, and patented baseball
and softball hitting and fielding training systems. (Compl. ¶ 1). Each of its products
For purposes of this motion, the following facts taken from the Complaint are presumed to be
bears the SWINGAWAY® trademark while also incorporating SwingAway’s patented
features, such as its ball returning dampening feature. (Id.). SwingAway is a Georgia
corporation that was formed in 2008 and has its principal place of business in Marietta,
Georgia. (Id. at ¶¶ 2, 14). It has now established itself as a leader in the market for
baseball and softball training aids, with projected sales of more than $1 million in 2012.
(Id. at ¶ 3).
Escalade is an Indiana corporation with its principal place of business in
Evansville, Indiana. (Id. at ¶ 15). Escalade is in the business of making and selling
sports-related equipment and products for a variety of sports, including basketball goals,
gaming tables, fitness equipment, and table tennis equipment. (Id. at ¶ 16). Escalade’s
average revenue from these products averages over $100 million annually. (Id.).
SwingAway is the assignee of U.S. Patent No. 5,795,250 (“the ‘250 patent”),
entitled “TETHERED BALL PRACTICE DEVICE,” which issued on August 18, 1998
(Id. at ¶ 23). The ‘250 patent covers all of SwingAway’s baseball and softball training
aids. (Id. at ¶ 25). Subsequently, on March 29, 2011, SwingAway was awarded a second
patent – U.S. Patent No. 7,914,400 (“the ‘400 patent”), entitled “BASEBALL
PRACTICE SYSTEMS.” (Id. at ¶ 27). This covered additional features on some of
SwingAway’s training aid products. (Id.). Additionally, SwingAway owns the federallyregistered SWINGAWAY® trademark. (Id. at ¶ 29).
On June 18, 2011, SwingAway’s president, John Flading, attended a trade show at
the College World Series in Omaha, Nebraska. (Id. at ¶ 30). An industry-renowned
hitting instructor alerted Flading that a SwingAway hitting and field aid was on display at
another exhibitor’s booth – Escalade. (Id. at ¶ 31). Because SwingAway is the only
authorized seller of the patented SwingAway system, Flading went to Escalade’s booth
and observed a training system identical in all material respects to a SwingAway device,
including the ball return dampening system covered by the ‘250 patent. (Id. at ¶ 32).
This product had been instead identified as a “Goalrilla Spring Trainer,” though on closer
inspection Flading discovered it was a SwingAway device with only minor cosmetic
changes. (Id. at ¶ 33). For example, Escalade replaced the frame around the return
backstop net with orange steel and substituted the target area on that net with a mat
incorporating the Goalrilla logo. (Id.). Moreover, the key components of the Goalrilla
Spring Trainer were actually parts physically taken from a SwingAway training device.
(Id. at ¶ 34). In fact, Flading discovered that Escalade had simply rubbed off the
SWINGAWAY® trademark from the exhibited device. (Id. at ¶ 34).
Flading alerted Escalade personnel at the booth that the device incorporated
SwingAway parts and infringed at least SwingAway’s ‘250 patent. (Id. at ¶ 35). In
response, Escalade personnel showed Flading copies of documents reflecting that the
‘250 patent had lapsed for failure to pay routine maintenance fees. (Id. at ¶ 36).
SwingAway alleges that it instructed its counsel to pay such fees, but its counsel
inadvertently failed to do so. (Id.). Escalade acknowledged that its device was covered
by the claims of the ‘250 patent but maintained that as a result of this lapse, it was free to
make, use, offer to sell, and sell products that read on the claims of the ‘250 patent. (Id.
at ¶¶ 37-38).
That same day, Flading contacted SwingAway’s patent counsel. (Id. at ¶ 40).
Counsel acknowledged their mistake in not paying the fee and filed a petition with the
Patent and Trademark Office (“PTO”), which advised of counsel’s inadvertent error, paid
the maintenance fee, and requested immediate reinstatement of the ‘250 patent. (Id.).
The PTO later reinstated the ‘250 patent that same day, and it remains in force. (Id. at ¶
On June 20, 2011, Escalade filed an action against SwingAway before this court
seeking a declaratory judgment of non-infringement with respect to the ‘250 patent.
Escalade, however, neither served a summons upon SwingAway nor took any other steps
to perfect service or prosecute its case. (Pl.’s Resp. 5). As a result, SwingAway did not
respond and the 120-day period for service under Rule 4(m) expired on October 18, 2011.
On December 29, 2011, Escalade moved to voluntarily dismiss the case, which this court
granted. Escalade contends that it allowed the 120-day service period to expire because it
assumed that SwingAway had acquiesced with respect to Escalade’s position that it had
intervening rights with respect to the ‘250 patent. (Def.’s Mot. Dismiss 3).
On November 8, 2011, approximately five months after the trade show,
SwingAway filed the present lawsuit in the Northern District of Illinois. Escalade then
moved to transfer the case to the Southern District of Indiana. On April 23, 2012,
District Judge Gettleman granted the motion to transfer to this court “[b]ecause the action
has no significant connection to the Northern District of Illinois.” (Dkt. 29). The Illinois
Court did not immediately transfer the case to this court; rather, the case was not
transferred until SwingAway’s counsel contacted the clerk of the Northern District of
Illinois on February 11, 2013 – almost ten months after the case was closed in Illinois.
Escalade now brings a motion to dismiss for failure to prosecute.
The court has the power to dismiss an action “[i]f the plaintiff fails to prosecute or
to comply with [the Federal Rules of Civil Procedure] or a court order.” FED. R. CIV. P.
41(b).2 Dismissal for failure to prosecute is an “extraordinarily harsh sanction that should
be used only in extreme situations, when there is a clear record of delay or contumacious
conduct, or when other less drastic sanctions have proven unavailing.” Gabriel v.
Hamlin, 514 F.3d 734, 736 (7th Cir. 2008) (citations and internal quotation marks
omitted). This rule “serves not only to protect defendants but also to aid courts in
keeping administrative control over their own dockets and to deter other litigants from
engaging in similar dilatory behavior.” Washington v. Walker, 734 F.2d 1237, 1239 (7th
Cir. 1984). In making this determination, the court should consider all circumstances of
the case. Kasalo v. Harris & Harris, Ltd., 656 F.3d 557, 561 (7th Cir. 2011).
The Seventh Circuit has suggested several factors in making this decision, among
others: (1) the frequency of the plaintiff’s failure to comply with deadlines; (2) the effect
of the mistakes on the judge’s calendar; (3) the prejudice that the delay caused to the
defendant; (4) the merit of the suit; and (5) the consequences of dismissal for the social
Local Rule 41.1 of the Southern District of Indiana states: “The court may dismiss a civil case
with judgment for costs if: (a) the plaintiff has not taken any action for 6 months; (b) the judicial
officer assigned to the case or the clerk has given notice to the parties that the case will be
dismissed for failure to prosecute it; and (c) at least 28 days have passed since the notice was
given.” However, the parties’ briefs -- and the court’s analysis -- focus on Federal Rule of Civil
Procedure 41(b). Moreover, since this case has not even been in this court’s jurisdiction for six
months, Local Rule 41.1 is not applicable here.
objectives that the litigation represents. Id. (citations omitted). In addition, courts have
also considered whether the court provided a warning to counsel prior to dismissal. The
court now examines these factors.
A. Warning of Dismissal
Although providing an explicit warning in advance of dismissal is advisable in
most circumstances, it is not required by a judge in every case. Heartland Mem’l Hosp.
LLC v. Gupta, 461 B.R. 746, 752 (N.D. Ind. 2011); but see Ball v. City of Chicago, 2
F.3d 752, 760 (7th Cir. 1993) (stating that “there must be an explicit warning before the
case is dismissed [for failure to prosecute]”). The Seventh Circuit explained that it did
not intend for Ball to create a rigid requirement for a warning prior to dismissal; rather, it
intended to “provide a useful guideline to district judges -- a safe harbor to minimize the
likelihood of appeal and reversal.” Fischer v. Cingular Wireless, LLC, 446 F.3d 663, 665
(7th Cir. 2006). Indeed, the Court noted that if a warning were required before a court
could dismiss a case, each litigant would be granted “one opportunity to disregard the
court’s schedule without fear of penalty regardless of the harm done to other litigants.”
Here, no such warning has been given, but it is difficult to determine who actually
would have provided one – the Northern District of Illinois who closed the case or this
court who did not even know of its existence? That said, any public policy concerns
about giving litigants a “free pass” are not present here as SwingAway did not simply
wait for court action but instead took active steps to move the case forward. Thus, this
factor does not support either side.
B. Frequency of Plaintiff’s Failure to Comply with Deadlines
Escalade contends that SwingAway has demonstrated a “long-term pattern of
inactivity and unreasonable delay in protecting its purported rights” by: (1) failing to pay
the maintenance fee for the ‘250 patent; (2) failing to respond to Escalade’s declaratory
judgment action; (3) waiting five months to file an action in the Northern District of
Illinois; and (4) waiting ten months to prompt the Northern District of Illinois to
effectuate the transfer to this court.
First, as SwingAway contends, its activities prior to this litigation are irrelevant to
this analysis, and Escalade has not cited authority holding otherwise. Escalade’s
argument misses the point of Rule 41(b), which is premised upon the “district courts’
ability to manage efficiently their heavy caseloads and thus protect the interests of all
litigants.” Roland v. Salem Contract Carriers, Inc., 811 F.2d 1175, 1177-78 (7th Cir.
1987). Thus, SwingAway’s failure to pay a maintenance fee has no bearing on the
court’s caseload and is not relevant here. Similarly, SwingAway’s “failure” to respond to
Escalade’s declaratory judgment action not only does not concern the present case but
also is a weak argument at best. Indeed, Escalade does not dispute failing to effectively
serve SwingAway with the complaint for this action, so it is a stretch to say SwingAway
was “sleeping on its rights” when it had no legal duty to respond. Thus, neither of these
factors has any bearing on the court’s analysis.
As to the current litigation, SwingAway’s filing of the complaint approximately
five months after learning of the alleged infringement is not a sign of delay on
SwingAway’s part. Again, the period of time prior to SwingAway’s filing of the action
has no effect on the court’s docket or resources. And SwingAway was under no
obligation to rush to the courthouse upon first noticing potential infringement of its
patents; indeed, the statue of limitations for infringement actions is six years. See 35
U.S.C. § 286 (“no recovery shall be had for any infringement committed more than six
years prior to the filing of the complaint or counterclaim for infringement in the action”).
Also, as a policy matter, courts promote developing and researching one’s case before
filing in court instead of immediately filing an action upon the discovery of any sliver of
a potential claim.
Lastly, and most importantly for this analysis, the court examines SwingAway’s
delay in effectuating the transfer from the Northern District of Illinois to the Southern
District of Indiana. To be sure, SwingAway neither missed a court hearing nor failed to
comply with any court orders or rules of practice. This does not end the inquiry,
however, as overt misbehavior is not required for dismissal. Indeed, “‘failure to
prosecute’ under the rule does not mean that the plaintiff must have taken any positive
steps to delay the trial or prevent it from being reached by the regular machinery of the
court. It is quite sufficient if he does nothing, knowing that until something is done there
will be no trial.” Washington, 734 F.2d at 1238 (citation omitted); see also Heartland
Memorial Hosp., 461 B.R. at 755 (finding that “inaction, alone, is sufficient to justify
That said, the inaction here is minimal. During this ten month period, SwingAway
obtained local counsel in Indiana and likely informed them about the case. Though this
should not have taken a significant portion of these ten months, it is understandable that
local counsel would want to evaluate the case prior to taking active steps to move it
forward. But at the crux of this dispute is the failure of the Northern District of Illinois to
transfer the case. The court agrees with Escalade that the duty of moving a case forward
lies with the plaintiff, not the court, and SwingAway’s counsel should have been more
diligent in effectuating the transfer. This lapse of several months alone, however, is no
where near the delay necessary to merit dismissal under Rule 41(b). See, e.g., Cohen v.
Hoyer, 32 F. App’x 755, 759 (7th Cir. 2002) (upholding dismissal for failure to prosecute
where plaintiff was inactive for over 20 months, failed to answer defendant’s
counterclaim, and ignored defendant’s efforts to conduct discovery); Washington, 734
F.2d at 1240 (affirming dismissal for lack of prosecution where plaintiffs had done
nothing to move it forward for more than five years); Heartland Mem’l Hosp., 461 B.R.
at 754 (denying appeal to dismissal for failure to prosecute where fourteen-month period
of inaction followed an eighteen-month period of additional inactivity by prior attorneys).
Even more, since being transferred to this court, SwingAway has engaged in discovery
with Escalade and attempted to arrange a Rule 16 conference, so it cannot be said that it
has been sleeping on its rights since entering this court. Accordingly, this factor does not
C. Effect on Court’s Calendar
This factor should be given the least amount of consideration when considering
dismissal as a sanction. Allen v. Interstate Brands, 186 F.R.D. 512, 521-22 (S.D. Ind.
1999). As this court only recently opened this case, it will not have a substantial effect
on its calendar. Indeed, SwingAway’s delay did not force this court to take time away
from other matters as it was not even aware of the case. Thus, this does not support
D. Prejudice that the Delay Caused to the Defendant
Escalade contends that it has been prejudiced by SwingAway’s delay because (1)
it closed its files after six months of inactivity, (2) witness memories are more attenuated,
and (3) damages may have increased due to further sales by Escalade. Although
“prejudice may be presumed from an unreasonable delay,” as noted above, the delay here
is minimal. Washington, 734 F.2d at 1239. Escalade’s decision to “close” its files and
consider the matter resolved after an arbitrary period has no effect. Escalade knew
SwingAway had used resources to bring a lawsuit and should not have assumed without
any other confirmation that SwingAway had abandoned this case. Escalade’s next
contention regarding witnesses, however, does hold some weight as “delays may make
the arduous task of mounting a defense even greater.” Allen, 186 F.R.D. at 522. While
the court appreciates the additional time and anxiety created by delays in litigation, the
length of time here has not been onerous. Finally, Escalade’s argument regarding any
additional damages due to the delay does not need to be addressed at this time as the
court will not put the cart before the horse by determining the life of the suit based on any
potential damages at the end. Accordingly, this factor slightly tips in Escalade’s favor.
E. Merit of the Suit
At this time it is difficult for the court to determine the merits of the suit as little, if
any, discovery has taken place. Escalade contends that even if its device is covered by
SwingAway’s patent, it has a meritorious defense of intervening rights under 35 U.S.C. §
41(c)(2). It is improper at this time, though, to decide not only whether that defense
applies, but also to what extent it covers Escalade’s sales. Giving the plaintiff the benefit
of the doubt, the court concludes that there is merit to SwingAway’s suit. See Allen, 186
F.R.D. at 522-23.
F. Consequences of Dismissal for the Social Objectives that the
SwingAway’s litigation represents the essence of patent law; that being, the
promotion of innovation and competition. Zenith Electronics Corp. v. Exzec, Inc., 182
F.3d 1340, 1352 (Fed. Cir. 1999). Here, SwingAway obtained a patent and now looks to
enforce the rights deriving from it. If the court prevented this case from reaching the
merits, it would devalue such goals of the patent system. See Allen, 186 F.R.D. at 523
(“If there is merit to the suit, dismissal on other grounds eradicates the social
objectives”). Accordingly, this factor does not support dismissal.
For the reasons set forth above, the court finds that this action should not be
dismissed pursuant to Federal Rule of Civil Procedure 41(b). Accordingly, Escalade’s
motion to dismiss (Docket # 38) is DENIED.
SO ORDERED this 7th day of June 2013.
RICHARDL. YOUNG, CHIEF JUDGE
RICHARD L. YOUNG, CHIEF JUDGE
United States District Court
United States District Court
SouthernDistrict of Indiana
Southern District of Indiana
Distributed Electronically to Registered Counsel of Record.
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