Konami Gaming, Inc. v. Marks Studios, LLC

Filing 187

ORDER. IT IS ORDERED that 173 Konami's motion to voluntarily dismiss without prejudic is GRANTED and 177 Marks Studios' motion for judgment is DENIED as moot. The CLERK OF COURT is directed to CLOSE THIS CASE. Signed by Judge Jennifer A. Dorsey on 3/16/2020. (Copies have been distributed pursuant to the NEF - MR)

1

UNITED STATES DISTRICT COURT

2

DISTRICT OF NEVADA

3 Konami Gaming, Inc.,
4

Plaintiff

5 v.

Case No.: 2:14-cv-01485-JAD-BNW
Order Granting Plaintiff’s Motion to
Voluntarily Dismiss, Denying Defendants’
Motion for Judgment as Moot, and Closing
this Case

6 Marks Studios, LLC,
7

Defendant

[ECF Nos. 173, 177]

8
After the patents underlying its claims were invalidated in a separate proceeding, 1

9

10 plaintiff Konami Gaming, Inc. moves to voluntarily dismiss this action without prejudice under
11 Federal Rule of Civil Procedure 41(a)(2). 2 Defendant Marks Studios, LLC opposes Konami’s
12 motion and moves for judgment under Rule 56 or 58, arguing that a dismissal under Rule 41
13 would prejudice its ability to move for costs under Rule 54(d)(1) and attorney’s fees under 35
14 U.S.C. § 285. 3 Because Marks Studios has not shown that a voluntary dismissal will cause it
15 legal prejudice, I grant Konami’s motion to voluntarily dismiss and deny Marks Studios’ motion
16 as moot.
17

Discussion

18

Rule 41 vests the district court with discretion to dismiss an action at the plaintiff’s

19 instance “upon such terms and conditions as the court deems proper.” 4 “A district court should
20
21
22
23

1

Konami Gaming, Inc. v. High 5 Games, LLC, No. 2:14-CV-01483-RFB-NJK, 2018 WL
1020120, at *1 (D. Nev. Feb. 22, 2018), aff’d, 756 F. App’x 994 (Fed. Cir. 2019).
2

ECF No. 173.

3

ECF Nos. 176; 177.

4

Hargis v. Foster, 312 F.3d 404, 407 (9th Cir. 2002).

1 grant a motion for voluntary dismissal under Rule 41(a)(2) unless a defendant can show that it
2 will suffer some plain legal prejudice as a result.” 5 “Legal prejudice” means “prejudice to some
3 legal interest, some legal claim, some legal argument” but not “[u]ncertainty because a dispute
4 remains unresolved.” 6 “For example, in determining what will amount to legal prejudice, courts
5 have examined whether a dismissal without prejudice would result in the loss of a federal forum,
6 or the right to a jury trial, or a statute-of-limitations defense.” 7
7

In CRST Van Expedited, Inc. v. Equal Employment Opportunity Commission, the United

8 States Supreme Court held that a defendant could be a prevailing party absent a judgment on the
9 merits under Title VII of the Civil Rights Act of 1964, reasoning that “a defendant has . . .
10 fulfilled its primary objective whenever the plaintiff’s challenge is rebuffed.” 8 The Federal
11 Circuit relied on CRST to affirm a district court’s conferral of prevailing-party status under 35
12 U.S.C. § 285 after dismissing the plaintiff’s claim with prejudice. 9 And because the Federal
13 Circuit interprets the term “prevailing party” consistently between 35 U.S.C. § 285 and Rule
14 54(d)(1), it later held that a dismissal for mootness was sufficient to confer prevailing-party
15 status on the defendant under Rule 54(d)(1). 10
16
17
5

18
19
20

Smith v. Lenches, 263 F.3d 972, 975 (9th Cir. 2001).

6

Westlands Water Dist. v. United States, 100 F.3d 94, 97 (9th Cir. 1996).

7

Id.

8

CRST Van Expedited, Inc. v. E.E.O.C., 136 S. Ct. 1642, 1651 (2016).

9

Raniere v. Microsoft Corp., 887 F.3d 1298, 1308 (Fed. Cir. 2018); see also Giesecke &
21 Devrient GmbH v. United States, No. 17-1812C, 2020 WL 401806, at *10 (Fed. Cl. Jan. 24,
2020) (holding that defendant was a prevailing party under 35 U.S.C. § 285 after voluntary
22 dismissal because defendant fulfilled its primary objective and “it would have made little sense
to force the parties to go through a charade of a merits determination no one wanted simply to
23 apply the moniker ‘with prejudice’”).
10

B.E. Tech., L.L.C. v. Facebook, Inc., 940 F.3d 675, 677 (Fed. Cir. 2019).
2

1

Marks Studios argues that it would be prejudiced by a voluntary dismissal because it

2 would lose its “substantial right” to be deemed a prevailing party under Rule 54(d)(1) and 35
3 U.S.C. § 285. But Federal Circuit decisions interpreting CRST suggest that Marks Studios can
4 be a prevailing party absent a final judgment. 11 And Marks Studios’ own brief suggests that its
5 concern amounts to uncertainty rather than legal prejudice, conceding that “dismissing an action
6 under Rule 41(a)(2) might prevent Marks Studios from achieving prevailing party status.” 12
7 Marks Studios relies on a decision from the United States District Court for the Middle District
8 of Florida in support of its position, but that decision pre-dates CRST and the Federal Circuit
9 decisions interpreting CRST. 13 Because Marks Studios fails to show legal prejudice from a
10 voluntary dismissal under Rule 41(a)(2), I grant Konami’s motion to voluntarily dismiss and
11 deny Marks Studios’ motion for judgment as moot. 14
12

Conclusion

13

IT IS THEREFORE ORDERED that Konami’s motion to voluntarily dismiss without

14 prejudice [ECF No. 173] is GRANTED and Marks Studios’ motion for judgment [ECF No.
15 177] is DENIED as moot. The CLERK OF COURT is directed to CLOSE THIS CASE.
16

Dated: March 16, 2020

17

_______________________________
U.S. District Judge Jennifer A. Dorsey

18
19
11

20

See Raniere, 887 F.3d 1298; B.E. Tech., L.L.C., 940 F.3d 675.

12

ECF No. 176 at 4 (emphasis added).

21

13

22

Peschke Map Techs. LLC v. Miromar Dev. Corp., No. 2:15-CV-173-FTM-38MRM, 2016 WL
1546465, at *2 (M.D. Fla. Apr. 15, 2016).
14

In their briefs, the parties approach the merits of whether Marks Studios is a prevailing party
and, if so, on what claims. ECF Nos. 176 at 2; 178 at 4. That issue is not before me, and this
23
order should not be construed as addressing whether Marks Studios is a prevailing party under
Rule 54(d)(1) or 35 U.S.C. § 285.
3