Green Edge Ent v. Rubber Mulch Etc LLC

Filing 589

MEMORANDUM AND ORDER : IT IS HEREBY ORDERED that the Joint Motion to Dismiss 587 is GRANTED. Count V of Rubber Resources' First Amended Counterclaim is DISMISSED with PREJUDICE, each party to bear its own costs and attorneys' fees. IT IS FURTHER ORDERED that Ronald Foster and Sara Pfrommer's Motion to Withdraw Appearance on Behalf of Rubber Resources 586 is GRANTED. IT IS FINALLY ORDERED that International Mulch Company and Michael Miller's Motion to Dismiss with Prejudice 585 is DENIED as MOOT. Attorney Ronald D. Foster and Sara Pfrommer terminated.. Signed by Magistrate Judge Terry I. Adelman on 5/1/12. (KKS)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
GREEN EDGE ENTERPRISES, LLC,

)
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Plaintiff,
)
)
v.
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RUBBER MULCH ETC., LLC, et al.,
)
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Defendants/Counterclaim Plaintiffs, )
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v.
)
)
GREEN EDGE ENTERPRISES, LLC,
)
INTERNATIONAL MULCH COMPANY, and
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MICHAEL MILLER, et al.,
)
)
Counterclaim Defendants.
)

No. 4:02CV566 TIA

MEMORANDUM AND ORDER
This matter is before the Court on International Mulch Company and Michael Miller’s Motion
to Dismiss with Prejudice [Doc. #585], Ronald Foster and Sara Pfrommer’s Motion to Withdraw
Appearance on Behalf of Rubber Resources [Doc. #586], and a Joint Motion to Dismiss [Doc. #587]
filed by International Mulch Company, Michael Miller, and Rubber Resources, Ltd. The parties
consented to the jurisdiction of the undersigned pursuant to 28 U.S.C. § 636(c).
The present patent case has been pending before this Court since April 19, 2002. On April
15, 2011, a jury returned its verdict finding, among other things, that all 8 claims of the ‘514 Patent
pertaining to rubber mulch were invalid on the bases that the claims were anticipated by any of the
prior art and that they would have been obvious to a person of ordinary skill in the field given the
prior art references and devices. (Verdict Form, ECF No. 512) During the trial, the parties requested
that the Court bifurcate the trial, severing Rubber Resources’ unfair competition counterclaim to

make it available for immediate appeal. On August 9, 2011, the Court issued Judgment in favor of
Rubber Resources, International Mulch Company, and Michael Miller and against Green Edge
Enterprises, LLC on the verdict invalidating the patent. (Judgment, ECF No. 556) That same day,
this Court certified the unfair competition claim for interlocutory appeal. (Mem. and Order, ECF No.
557)
Rubber Resources filed a Petition for Permission to Appeal in the Federal Circuit Court of
Appeals on August 19, 2011. The Federal Circuit denied the petition on December 13, 2011. Green
Edge Enters., LLC v. Rubber Mulch, Etc., 2011 WL 6187107 (Fed. Cir. Dec. 13, 2011).
International Mulch and Michael Miller filed a motion to dismiss on April 3, 2012, and a joint motion
to dismiss filed by International Mulch, Michael Miller, and Rubber Resources followed soon
thereafter. (ECF Nos. 585, 587) In addition, two of Rubber Resources’ lead counsel filed a motion
to withdraw appearance on April 12, 2012. (ECF No. 586) Plaintiff/Counterclaim Defendant Green
Edge, as well as Cross/Counterclaim Defendants Judy Smith and Lee Greenberg have not filed
responses to any of the pending motions, and the time for doing so has expired.
Under Rule 41(a)(2) of the Federal Rules of Civil Procedure, “an action may be dismissed at
the plaintiff’s request only by court order, on terms that the court considers proper.” In the Joint
Motion to Dismiss, Rubber Resources requests that this Court dismiss with prejudice Count V of its
First Amended Counterclaim, which alleges unfair competition under the Lanham Act. According
to the motion, International Mulch, Michael Miller, and Rubber Resources have reached a settlement
agreement to dismiss the counterclaim, each party to bear its own costs and attorneys’ fees. The
undersigned finds that, after a decade of litigation, the terms in the joint request are proper.
Accordingly,
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IT IS HEREBY ORDERED that the Joint Motion to Dismiss [Doc. #587] is GRANTED.
Count V of Rubber Resources’ First Amended Counterclaim is DISMISSED with PREJUDICE,
each party to bear its own costs and attorneys’ fees.
IT IS FURTHER ORDERED that Ronald Foster and Sara Pfrommer’s Motion to Withdraw
Appearance on Behalf of Rubber Resources [Doc. #586] is GRANTED.
IT IS FINALLY ORDERED that International Mulch Company and Michael Miller’s
Motion to Dismiss with Prejudice [Doc. #585] is DENIED as MOOT.

/s/ Terry I. Adelman
UNITED STATES MAGISTRATE JUDGE
Dated this

1st

day of May, 2012.

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