Wine Enthusiast, Inc. v. Vinotemp International Corporation
Filing
84
MEMORANDUM OPINION AND ORDER: Accordingly, it is herebyORDERED that Wine Enthusiasts motion for sanctions is denied, and as further set forth in this Order. (Signed by Judge Denise L. Cote on 4/1/2019) (jca)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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WINE ENTHUSIAST, INC.,
:
:
Plaintiff,
:
:
-v:
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VINOTEMP INTERNATIONAL CORPORATION,
:
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Defendant.
:
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17cv6782(DLC)
MEMORANDUM OPINION
AND ORDER
DENISE COTE, District Judge:
On July 19, 2018, the Court dismissed defendant and
counterclaim-plaintiff Vinotemp International Corporation’s
(“Vinotemp”) counterclaim for infringement of United States
Patent No. D711,936 (the “D936 Patent”), finding no design
patent infringement as a matter of law.
On December 14, 2018,
plaintiff and counterclaim-defendant Wine Enthusiast, Inc.
(“Wine Enthusiast”) filed a motion pursuant to Rule 11, Fed. R.
Civ. P., seeking sanctions against Vinotemp.
That motion became
fully submitted on January 18, 2019.
Wine Enthusiast contends that Vinotemp violated Fed. R.
Civ. P. 11(b) by asserting a frivolous claim for infringement of
a patent that it knew or should have known was invalid.
Wine
Enthusiast asserts that “recently uncovered evidence” shows that
the claimed invention was publicly disclosed more than a year
prior to the date of the patent application and the patent is
thus invalid.
Fed. R. Civ. P. 11(b) requires that an attorney make an
“inquiry reasonable under the circumstances” as to the legal and
factual merits of any pleading presented to the court.
Vinotemp’s counsel has submitted a declaration outlining the
inquiry that he undertook.
Fed. R. Civ. P. 11(c)(1) provides that “[i]f, after notice
and a reasonable opportunity to respond, the court determines
that Rule 11(b) has been violated, the court may impose an
appropriate sanction . . . .”
discretionary, not mandatory.”
“[S]anctions under Rule 11 are
Ipcon Collections LLC v. Costco
Wholesale Corp., 698 F.3d 58, 63 (2d Cir. 2012).
Sanctions are not appropriate at this late stage.
Vinotemp’s counterclaim was filed on September 6, 2017.
An
Order of December 21, 2017 directed Wine Enthusiast to serve its
invalidity contentions under Local Patent Rule 7 by May 11,
2018.
The counterclaim was dismissed on July 19, 2018.
Wine
Enthusiast first raised the prior public disclosure issue with
Vinotemp over three months later, in a letter dated October 31,
2018.
“Although Rule 11 contains no explicit time limit for
serving the motion, the ‘safe harbor’ provision functions as a
practical time limit, and motions have been disallowed as
untimely when filed after a point in the litigation when the
lawyer sought to be sanctioned lacked an opportunity to correct
or withdraw the challenged submission.”
2
In re Pennie & Edmonds
LLP, 323 F.3d 86, 89 (2d Cir. 2003).
While Wine Enthusiast
brings the motion on the basis of “recently discovered
evidence,” it has not adequately explained why this information
was not available to Wine Enthusiast at an earlier stage.
It
asserts only that it uncovered this evidence during an
investigation of Vinotemp’s counterclaim for trade dress
infringement.
As Wine Enthusiast’s own submissions indicate,
however, the information was publicly available.
Further, the validity of the D936 Patent has not been fully
litigated, and a motion for sanctions pursuant to Rule 11 is not
the appropriate vehicle for doing so.
Accordingly, it is hereby
ORDERED that Wine Enthusiast’s motion for sanctions is
denied.
Dated:
New York, New York
April 1, 2019
____________________________
DENISE COTE
United States District Judge
3
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