Becnel et al v. Southland Rental Tools, Inc.

Filing 20

ORDER and REASONS - Presently before the Court is a motion to stay 10 urged by Defendant, Southland Rental Tools, Inc.. IT IS ORDERED that the motion is DENIED, as stated within document. Signed by Judge Kurt D. Engelhardt on 6/5/2013. (cbs)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
MARK L. BECNEL AND
JASON M. BECNEL

CIVIL ACTION

VERSUS

NO. 13-44

SOUTHLAND RENTAL TOOLS, INC.

SECTION "N" (2)

ORDER AND REASONS
Presently before the Court is a motion to stay (Rec. Doc. 10) urged by Defendant,
Southland Rental Tools, Inc. For the reasons stated herein, IT IS ORDERED that the motion is
DENIED.
BACKGROUND
On March 1, 2012, Southland sued Mark Becnel, Jason Becnel,1 Jack Becnel, and
Becnel Rental Tools, LLC, in Louisiana state court. See Southland Rental Tools, Inc. v. Mark
Becnel, Jason Becnel, Jack Becnel, and Becnel Rental Tools, LLC, No. 59-461, 25th Judicial District
Court, Parish of Plaquemines. On April 27, 2012, the Becnels filed peremptory exceptions of no
cause of action, prescription, and peremption, and, in the alternative, a motion for summary
judgment in the state court proceeding. On June 25, 2012, Southland filed a First Amended and
Restated Petition, setting forth additional facts and claims, and adding defendants. Thereafter, on

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The Court shall refer herein to Mark Becnel and Jason Becnel as "the Becnels".
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September 18, 2012, the Becnels filed an Answer and Reconventional Demand in state court,
alleging claims of patent infringement, conversion, unfair trade practices, and defamation. In
response, Southland filed an exception for lack of subject matter jurisdiction as to the patent
infringement claim, urging the existence of exclusive federal court jurisdiction, pursuant to 28
U.S.C. § 1338, over such claims. On December 6, 2012, the state court heard oral argument and took
the Becnels' peremptory exceptions of no cause of action, prescription, and peremption and, in the
alternative, motion for summary judgment, under advisement.
On January 8, 2013, the Becnels filed the instant action against Southland and, the
following day, January 9, 2013, moved in state court, without opposition, to dismiss their patent
infringement claims. On February 21, 2013, Southland filed the motion to stay now before this
Court. A number of written submissions by the parties followed. The latest advises the Court that
the state court has denied the Becnels' exceptions and alternative motion for summary judgment.
See Rec. Doc. 19-1.
LAW AND ANALYSIS
Defendant, Southland, asks the Court to stay this federal proceeding in favor of its
pending state court action under the abstention principles set forth in Colorado River Water
Conserv. Dist. v. United States, 424 U.S. 800, 813 (1976). As explained by the Fifth Circuit in
Stewart v. Western Heritage Ins. Co., 438 F.3d 488, 492-93 (5th Cir. 2006):
Colorado River applies when suits are parallel, having the same
parties and the same issues. Diamond Offshore Co. v. A&B Builders,
Inc., 302 F.3d 531, 540 (5th Cir. 2002). [FN3]2 Under Colorado
River, a district court may abstain from a case only under
“exceptional circumstances.” Colorado River, 424 U.S. at 813, 96

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If the suits are not parallel, the federal court must exercise jurisdiction. RepublicBank
Dallas, N.A. v. McIntosh, 828 F.2d 1120, 1121 (5th Cir.1987).
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S.Ct. 1236 (describing abstention as "an extraordinary and narrow
exception to the duty of a District Court to adjudicate a controversy
properly before it").
In deciding whether "exceptional circumstances" exist, the Supreme
Court identified six relevant factors: 1) assumption by either court
of jurisdiction over a res, 2) relative inconvenience of the forums, 3)
avoidance of piecemeal litigation, 4) the order in which jurisdiction
was obtained by the concurrent forums, 5) to what extent federal law
provides the rules of decision on the merits, and 6) the adequacy of
the state proceedings in protecting the rights of the party invoking
federal jurisdiction. Kelly Inv., Inc. v. Continental Common Corp.,
315 F.3d [491, 497 (5th Cir. 2002)]; see also Wilton v. Seven Falls
Co., 515 U.S. 277, 285-86, 115 S. Ct. 2137, 132 L. Ed.2d 214 (1995).
We do not apply these factors mechanically, but carefully balance
them "with the balance heavily weighted in favor of the exercise of
jurisdiction." Moses H. Cone Mem'l Hosp. v. Mercury Constr. Corp.,
460 U.S. 1, 16, 103 S.Ct. 927, 74 L.Ed.2d 765 (1983). The balancing
is done on a case-by-case basis. Id.

Applying the foregoing principles here, the Court initially notes that the two actions
are not identical. The Becnels' patent infringement claim no longer is pending in state court.
Further, the state court action includes claims and parties, including defendants and a third-party
intervenor, not involved in this federal court action. In any event, the Court is not convinced that
an "extraordinary and narrow exception" to the "virtually unflagging obligation of the federal courts
to exercise the jurisdiction given them" exists here. Colorado River, 424 U.S. at 814, 817, 96 S. Ct.
1236. Thus, the motion to stay is denied.
First, neither the state court nor this federal court has assumed jurisdiction by taking
control over a res. The absence of this factor supports a federal court's general rule of exercising
the jurisdiction granted to it. Stewart, 438 F.3d at 492; Murphy v. Uncle Ben's Inc., 168 F.3d 734,
738 (5th Cir. 1999).
Second, the relative inconvenience of the federal and state fora is "analyzed as to

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'whether the inconvenience of the federal forum is so great' that abstention is warranted." Kelly Inv.,
Inc. v. Continental Common Corp., 315 F.3d 494, 498 (5th Cir. 2002)(quoting Evanston Ins. Co. v.
Jimco, Inc., 844 F.2d 1185, 1192 (5th Cir.1988)). Given the close geographical proximity of the two
courts, in New Orleans and Belle Chasse, Louisiana, and the presumed location of witnesses and
evidence, this factor weighs again abstention.
The third factor, avoiding piecemeal litigation, likewise favors this Court's exercise
of its jurisdiction. The concern with piecemeal litigation arises primarily where parallel lawsuits
"'pose[] a risk of inconsistent outcomes not preventable by principles of res judicata and collateral
estoppel.'" Saucier v. Aviva Life and Annuity Co., 701 F.3d 458, 464 (5th Cir. 2012) (quoting
Woodford v. Cmty. Action Agency of Greene County, Inc., 239 F.3d 517, 524 (2nd Cir. 2001)). On
the other hand, "[t]he prevention of duplicative litigation [even if wasteful] is not a factor to be
considered in an abstention determination." Evanston, 844 F.2d at 1192; see also Black Sea v.
United Heritage Corp., 204 F.3d 647, 650 (5th Cir. 2000). Rather, "[t]he only bar to dual
prosecution is dismissal due to res judicata [and collateral estoppel]." Evanston, 844 F.2d at 1192;
Here, there is no indication that principles of res judicata and collateral estoppel
would not apply to issues common to the two proceedings. Thus, dual litigation should not yield
inconsistent results. Additionally, "the decision to invoke Colorado River abstention necessarily
contemplates that the federal court will have nothing further to do in resolving any substantive part
of the case, whether it stays or dismisses." Murphy, 168 F.3d 73 (quoting Moses H. Cone Mem'l
Hosp., 460 U.S. at 28). In this instance, as previously stated, the Becnels' patent infringement claim
is justiciable only in federal court. Thus, even if this Court abstains in favor of the state court,
litigation in federal court would not necessarily be avoided. Accordingly, this factor favors this

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Court's exercise of its jurisdiction.3
The fourth factor concerns the order in which jurisdiction was obtained by the
concurrent forum. Simple filing order, however, is not always dispositive. Instead, the Court must
evaluate how much progress has been made in the two suits. Stewart, 438 F.3d at 492-93.
Regarding this factor, the Court notes that the state court has denied the Becnels' previously filed
exceptions and that some discovery has occurred. On the other hand, in addition to filing the instant
motion, Southland has delayed progress in this action by failing to file an answer in accordance with
the February 21, 2013 deadline. See Rec. Doc. 9. Nor is it apparent that state court discovery, if
truly duplicative, could not be used here. Given these facts, the Court is not in a position to find that
this factor weighs strongly in favor of abstention.
The fifth and sixth factors address the extent to which federal law is controlling and
the adequacy of the state court4 relative to the dispute(s) at issue. Stewart, 438 F.3d at 492-93.
"'Although in some rare circumstances the presence of state-law issues may weigh in favor of
[abstention] . . ., the presence of federal-law issues must always be a major consideration weighing
against surrender.'" Saucier, 701 F.3d 465 (5th Cir. 2012) (quoting Moses H. Cone Mem'l Hosp.,
460 U.S. at 26). Even in the absence of a federal law issue, "[the Court's] task in cases such as this

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The Court additionally finds the cases cited by Southland (Rec. Doc. 10-1, pp. 7-8)
to support a federal court stay (in favor of pending state court litigation in which patent ownership
will be addressed) to be materially distinguishable. See Pirkle v. Ogontz Controls. Co., No. 863374, 1987 WL 19882 (E. D. Pa. 1987), aff'd., 852 F.2d 1293 (Fed Cir. 1988); Gen-Probe, Inc. v.
Amoco Corp., 926 F. Supp. 948 (S. D. Cal. 1996); Lerco Corp. v. Haley, 597 F. Supp. 517 (W.D.
Ky. 1983).
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This factor “can only be a neutral factor or one that weighs against, not for,
abstention.” Black Sea, 204 F.3d 647, 651 (5th Cir. 2000) (quoting Evanston Ins. Co., 844 F.2d at
1193).
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is not to find some substantial reason for the exercise of federal jurisdiction by the district court;
rather, the task is to ascertain whether there exist 'exceptional circumstances,' the 'clearest of
justifications,' that can suffice under Colorado River to justify the surrender of that jurisdiction."
Black Sea, 204 F.3d at 651 (5th Cir. 2000)(quoting Moses H. Cone Mem'l Hosp., 460 U.S. at 21).
Thus, “the presence of state law issues weighs in favor of surrender only in rare circumstances." Id.
Here, this Court has exclusive federal subject matter jurisdiction regarding the Becnels' patent
infringement claim. Nor does the Court find the preliminary state law questions, including
ownership, to qualify as "rare circumstances" justifying abstention. Accordingly, these factors
likewise weigh against abstention. Id.
CONCLUSION
Having considered all relevant factors, the Court finds that Colorado River abstention
is not appropriate in this matter. Accordingly, IT IS ORDERED that the motion to stay presently
before the Court is DENIED.
New Orleans, Louisiana, this 5th day of June 2013.

___________________________________
Kurt D. Engelhardt
United States District Judge

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