PROFOOT, INC. v. BAYER HEALTHCARE LLC et al

Filing 302

OPINION. Signed by Judge Anne E. Thompson on 7/21/2016. (gxh)

NOT FOR PUBLICATION

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
PROFOOT, INC.,
Plaintiff,
Civ. No. 11-7079
v.
OPINION
BAYER HEALTHCARE LLC,
Defendant.

THOMPSON, U.S.D.J.
INTRODUCTION
This matter has come before the Court on a motion by Plaintiff ProFoot, Inc. (“Plaintiff”)
to certify a jury verdict for immediate appeal. (ECF No. 281). Defendant Bayer HealthCare
LLC (“Defendant”) does not oppose the motion. (ECF No. 294). Upon consideration of the
parties’ written submissions and without oral argument pursuant to Local Civil Rule 78.1(b), the
Court will grant Plaintiff’s motion.
BACKGROUND
Plaintiff is a family-owned company that produces foot care products for use inside
customers’ shoes. Defendant owns the “Dr. Scholl’s” brand of similar products. In December
2011, Plaintiff filed a complaint against Defendant1 alleging multiple trademark infringement

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Plaintiff originally filed suit against MSD Consumer Care, Inc. and Merck & Co., Inc. (ECF
No. 1). MSD had owned the Dr. Scholl’s business and trademarks. (Id. at ¶ 17). In 2009,
Merck acquired MSD and Dr. Scholl’s in a merger. (Id. at ¶ 19). In 2015, Bayer HealthCare
LLC acquired Dr. Scholl’s, and the parties later consented to substitute in Bayer HealthCare LLC
as the named defendant in this case. (ECF No. 289). This opinion will consistently refer to
“Defendant” for simplicity’s sake.
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and unfair competition claims. (ECF No. 1). At the heart of these allegations was Defendant’s
adoption of an acronym for its line of Pain Relief Orthotics, “P.R.O.,” which Plaintiff believed
infringed on its ProFoot marks and caused confusion. (See, e.g., id. at ¶¶ 87-90). In February
2012, the Court granted Plaintiff leave to file an amended complaint that added antitrust and
tortious interference claims. (ECF No. 99). These claims focused on Dr. Scholl’s alleged ability
to interfere with Plaintiff’s product distribution due to Defendant’s position as the dominant foot
care brand. (ECF No. 102 at ¶¶ 212-28). In December 2015, the Court bifurcated Plaintiff’s
claims for trial, setting a trial date solely for Plaintiff’s trademark claims. (ECF No. 162).
Plaintiff tried its trademark claims in May 2016. The jury found that Defendant had not
infringed on Plaintiff’s trademark. (ECF No. 266). Plaintiff moved for the Court to certify the
jury verdict as a final judgment, so that Plaintiff could appeal the trademark verdict before the
ongoing antitrust and tortious interference claims are resolved. (ECF No. 281). This motion is
presently before the Court.
LEGAL STANDARD
Federal Rule of Civil Procedure 54(b) provides that when an action involves multiple
claims for relief, “the court may direct entry of a final judgment as to one or more, but fewer
than all, claims” only if the Court finds “no just reason for delay.” Fed. R. Civ. P. 54(b). Rule
54(b) is “the exception, not the rule, to the usual course of proceedings in a district court.”
Elliott v. Archdiocese of New York, 682 F.3d 213, 220 (3d Cir. 2012). When deciding a motion
to certify, district courts should consider “whether the claims under review [are] separable from
the others remaining to be adjudicated and whether the nature of the claims already determined
[is] such that no appellate court would have to decide the same issues more than once even if
there were subsequent appeals.” Carter v. City of Philadelphia, 181 F.3d 339, 346 (3d Cir.
1999) (quoting Curtiss-Wright Corp. v. Gen. Elec. Co., 446 U.S. 1, 8 (1980)) (alteration in
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original). Rule 54(b) “attempts to strike a balance between the undesirability of piecemeal
appeals and the need for making review available at a time that best serves the needs of the
parties.” Elliott, 682 F.3d at 220 (citation omitted).
ANALYSIS
“Ordinarily the proceedings in a district court must be final as to [] all causes of action
and parties for a court of appeals to have jurisdiction over an appeal under 28 U.S.C. § 1291.”
Morton Int’l, Inc. v. A.E. Staley Mfg. Co., 460 F.3d 470, 476 (3d Cir. 2006). An “order which
terminates fewer than all claims, or claims against fewer than all parties,” by contrast, fails to
“constitute a ‘final’ order for purposes of appeal under 28 U.S.C. § 1291.” Id. (quoting Carter,
181 F.3d at 343. Courts may enter final judgment as to a particular claim or defendant when:
“(1) there has been a final judgment on the merits, i.e., an ultimate disposition on a cognizable
claim for relief; and (2) there is ‘no just reason for delay.’” Berckeley Inv. Grp., Ltd. v. Colkitt,
455 F.3d 195, 202 (3d Cir. 2006) (citation omitted). A jury delivered a verdict on Plaintiff’s
trademark claims, thus satisfying the first requirement for certification. To determine if there is
“just reason for delay,” the Court must consider the following Berckeley factors:
(1) the relationship between the adjudicated and unadjudicated claims; (2) the
possibility that the need for review might or might not be mooted by future
developments in the district court; (3) the possibility that the reviewing court might
be obliged to consider the same issue a second time; (4) the presence or absence of
a claim or counterclaim which could result in set-off against the judgment sought
to be made final; (5) miscellaneous factors such as delay, economic and solvency
considerations, shortening the time of trial, frivolity of competing claims, expense,
and the like.
Id. at 203 (citation omitted).
On the first Berckeley factor, the Court has already determined that Plaintiff’s trademark
and antitrust claims are sufficiently separate to warrant bifurcation. (See Mem. Order, ECF No.
162). When two sets of claims are factually separable, this factor weighs in favor of
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certification. See Medrad, Inc. v. Tyco Healthcare Grp., LP, No. 01-1997, 2005 WL 3466038, at
*2 (W.D. Pa. Dec. 19, 2005). On the second factor, the jury trial has concluded and there have
been no motions subsequent to the verdict that would affect the finality of the jury’s
determination. Therefore, there are no potential future developments that might moot the need
for appellate review of Plaintiff’s trademark claims.
Reviewing the third Berckeley factor, while there is always some risk that an appellate
court may need to revisit an issue, the risk appears to be low in this case. Plaintiff has made
clear in its amended complaint and at a post-trial status conference with Magistrate Judge Lois
H. Goodman that the underlying facts and issues for its antitrust and tortious interference claims
are different from those underlying its trademark claims. Therefore, the Third Circuit should not
need to examine the same legal issues twice. On the fourth Berckeley factor, there are no
potential set-offs in this case. Turning to the final Berckeley factor, the Court finds that the
circumstances of the case weigh in favor of certification, since it is unknown when the antitrust
and tortious interference claims will be fully resolved, and the parties either both desire or
acquiesce to prompt appellate review of the trademark claims.
Since all five Berckeley factors weigh in favor of certification, the Court shall certify the
trademark verdict as a final, appealable judgment under Federal Rule of Civil Procedure 54(b).
CONCLUSION
For the foregoing reasons, Plaintiff’s motion will be granted. An appropriate order will
follow.

/s/ Anne E. Thompson
ANNE E. THOMPSON, U.S.D.J.
Date: July 21, 2016
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