Arkwright Advanced Coating, Inc. v. MJ Solutions GmbH

Filing 84

ORDER granting in part 72 Motion for Relief from Judgment (Written Opinion) Signed by Senior Judge David S. Doty on 3/9/2017. (DLO)

UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Civil No. 14-5030(DSD/TNL)
Arkwright Advanced Coating, Inc.,
Petitioner,
v.

ORDER

MJ Solutions GmbH,
Respondent.

Kurt J. Niederluecke, Esq and Fredrikson & Byron, PA, 200
South 6th Street, Suite 4000, Minneapolis, MN, counsel for
petitioner.
David A. Davenport, Esq., and Winthrop & Weinstine, PA, 225
South Sixth Street, Suite 3500, Minneapolis, MN 55402, counsel
for respondent.

This matter is before the court upon the motion of petitioner
Arkwright Advanced Coating, Inc. for relief from judgment.

Based

on a review of the file, record, and proceedings herein, and for
the following reasons, the court grants the motion in part.

BACKGROUND
The background of this matter is fully set forth in the
court’s June 2, 2015, order granting respondent MJ Solutions GmbH’s
motion to confirm arbitration award.

The court recites only those

facts necessary to resolve the instant motion.
The underlying arbitration award, confirmed by the court,
includes the following injunctive relief:

[Arkwright] is hereby permanently enjoined from making,
using, or selling, its dark transfer products, which are
hereby deemed ‘Covered products’ under the License
Agreement ....
Niederluecke Decl. Ex. B, at 34.

The parties appear to agree that

the injunction is limited to products subject to MJ Solutions’
patents covered by the license agreement.

According to Arkwright,

the relevant patents expire on March 13, 2017. Arkwright therefore
requests that the court vacate the injunction effective March 14,
2017.

DISCUSSION
Arkwright seeks relief under Fed. R. Civ. P. 60(b)(5), which
provides that a court “may relieve a party from a final judgment,
order, or proceeding” if applying it “prospectively is no longer
equitable.” “Because an injunction, whether right or wrong, is not
subject to impeachment in its application to the conditions that
existed

at

its

making,

appellants

must

identify

changed

circumstances that shift the equitable balance in their favor under
Rule 60(b)(5).” Wells Fargo Bank, N.A. v. WMR e-PIN, LLC, 653 F.3d
702, 715 (8th Cir. 2011) (internal quotation marks and citation
omitted).
MJ Solutions objects to the motion, arguing that the judgment
should not be disturbed because Arkwright could have and should
have raised this issue sooner. MJ Solutions also argues that there
are additional patents relevant to the injunction that do not
2

expire until 2020 or later, which render the injunction viable well
after March 13, 2017.
Although Arkwright could have raised this issue sooner, the
court is persuaded that equity demands at least some limitation on
the injunctive relief awarded.

The law is clear, and MJ Solutions

does not dispute, that “a district court cannot enjoin infringement
of an expired patent.”

Allan Block Corp. v. Cty. Materials Corp.,

634 F. Supp. 2d 979, 990 (D. Minn. 2008) (citing Lans v. Digital
Equip. Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001); see also Kearns
v. Chrysler Corp., 32 F.3d 1541, 1550 (Fed. Cir. 1994) (“[W]hen the
rights secured by a patent are no longer protectable by virtue of
expiration or unenforceability, entitlement to injunctive relief
becomes

moot

because

such

relief

is

no

longer

available.”);

Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, No. 99-870,
2007 WL 4322295, at *1 (D. Colo. Dec. 7, 2007) (holding that the
permanent injunction “automatically dissolved” once the underlying
patent expired). It would be inequitable for the court to conclude
that the injunction should remain in place as to the soon-to-be
expired patents when the law definitively establishes the contrary.
Under the circumstances, Arkwright’s failure to raise the issue
sooner, while not ideal, is excusable.1

1

As a result, the court denies MJ Solutions’ motion for
sanctions.
3

To MJ Solutions’ second point, however, the court is concerned
that vacating the injunction as a whole would be an overly broad
remedy.

MJ

Solutions

claims

that

there

are

other

patents

underlying the injunction that do not expire until 2020 or later.
Although Arkwright disagrees, neither party submits sufficient
information to allow the court to resolve the issue.

As a result,

the court will narrowly tailor Arkwright’s relief by limiting the
injunction to all applicable valid patents. This means that, as of
March 14, 2017, Arkwright will not be enjoined from activity based
on the patents that expire on March 13, 2017.

This order will also

apply to any other patents subject to the injunction that expire
after March 13, 2017.

CONCLUSION
Accordingly, IT IS HEREBY ORDERED that the motion for relief
from judgment [ECF No. 72] is granted in part as set forth above.

Dated: March 9, 2017
s/David S. Doty
David S. Doty, Judge
United States District Court

4