Pentair Water Pool and Spa, Inc. et al v. Hayward Industries, Inc. et al

Filing 124

ORDER granting in part and denying in part 72 Motion to Strike. The Clerk of Court is also DIRECTED to terminate the motion at 77 , in light of docket entry 90 . Counsel is reminded to read the order in its entirety for further instructions. Signed by Senior Judge James C. Fox on 1/30/2012. (Edwards, S.)

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NORTH CAROLINA

WESTERN DIVISION

No.s:n-CV-4S9-F

PENTAIR WATER POOL AND SPA, INC.;
and DANFOSS DRIVES A/S,
Plaintiffs and Counterclaim
Defendants,

v.
HAYWARD INDUSTRIES, INC.; and
HAYWARD POOL PRODUCTS, INC.,
Defendants and Counter­
Claimants.

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ORDER

This matter is before the court on Pentair's Motion to Strike, or, in the Alternative, to
Sever and Transfer [DE-72] Ha)'W'ard's Amended Answer and Counterclaims [DE-50].

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Specifically, Pentair contends Ha)'W'ard filed its Amended Answer and Counterclaims [DE-50]
in violation of Rule ls(a)(l), Fed. R. Civ. P., impermissibly adding a claim alleging infringement
of an unrelated patent. Alternatively, Pentair moves the court to sever the newly-added '804
Patent counterclaim (Claim IX), and to transfer that claim to the Central District of California
where Pentair has instituted a declaratory judgment action against Ha)'W'ard concerning the
'804 Patent. Ha)'W'ard, of course, objects and declares that "Pentair's motion is merely a means
of advancing its goal of forcing Ha)'W'ard to bear the inconvenience and unnecessary expense of
fighting Pentair's declaratory judgment action on the '804 Patent in the Central District of
California as opposed to where it properly belongs as part of the present litigation before this
court." Ha)'W'ard's Memorandum [DE- 96] p. 10.

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As a housekeeping matter, the Clerk of Court is DIRECTED to terminate DE-77],
which was corrected by [DE-90].

The '804 Patent, purportedly issued twelve years ago, concerns the "structural
arrangement of mechanical components for a heater," Pentair's Reply [DE-120] p. 1, of a type
that may be used with a swimming pool/spa pumping system, such as the systems that are the
subject of this lawsuit. Hayward explains that several elements of claims that are at issue in this
litigation mention a "heater," and therefore, Hayward's '804 Patent infringement allegations
against Pentair properly should be prosecuted in this case. Of course, if that argument were
valid, both parties should be permitted to add allegations against each other concerning
infringement of chemical disbursement devices, waterfall/fountain features, automatic pool
vacuum devices, lighting features, etc. There are myriad optional attachments and auxiliary
devices that may be controlled and operated as add-ons to the variable speed pumps that
allegedly are infringed here. 2 However, the court fails to appreciate how the evidence and
witnesses concerning structural arrangements for an optional heater are relevant to the issues
necessary to decide Pentair's infringement action (and Hayward's corresponding counterclaims
seeking declaratory judgment) with regard to the variable speed pump~.
The court concludes that Hayward's construction of Rule Is(a)(I) is correct, and that it
was permitted under that Rule, as amended in 2009, to add the '804 counterclaim on the very
last day it could do so without consent or leave of court. However, the court recognizes that the
literal application of the amended rule to the facts in this case does not further the well­
documented objective of the amendment. 3 That is, although Pentair's Response [DE-4S] was in

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See, e.g., '597 Patent, Exh. PX-l to [DE-8], col. 3,11. 37-43. "The definition of
'swimming pool' includes, but is not limited to, swimming pools, spas, and whirlpool baths, and
further includes features and accessories associated therewith, such as water jets, waterfalls,
fountains, pool filtration equipment, chemical treatment equipment, pool vacuums, spillways
and the like."

3 "The right to amend once as a matter of course is no longer terminated by service of a
responsive pleading. The responsive pleading may point out issues that the original pleader had
not considered and persuade the pleader that amendment is wise." Committee Note
accompanying 2009 amendment of Rule 15, Fed. R. Civ. P.

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the nature of an "answer" to Hayward's counterclaims contained in Hayward's Answer and
Counterclaims [DE-32], Pentair's Response did not raise new issues Pentair inadvertently
omitted from the Complaint that should have suggested that Hayward would be wise to amend
its counterclaims to add another to allege infringement by Pentair of a heater patent. Even
Hayward does not contend that the '804 counterclaim could be construed as "compulsive" or
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otherwise necessary to the adjudication of the variable speed pump litigation properly before the
court.
Upon consideration of the parties' arguments, together with its independent research
related to amended Rule ls(a)(l), as well as the parties' allegations concerning the nature of the
'804 patent and relationship, or lack thereof, to the patents-in-issue here, the court concludes
that Pentair's Motion to Strike Hayward's Answer and Counterclaims [DE-4S] must be, and
hereby is, DENIED. That analysis also results, however, in the conclusion that the '804 heater
patent infringement claim Hayward injected into this variable speed pump patent litigation on
the last day it could amend without consent or leave, does not belong in this case. Rather, the
record supports Pentair's argument that "[n lot only is the technology of the '804 Patent

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unrelated [to the issues concerning the patents-in-issue], but involves entirely different operativf
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facts, experts, witnesses, markets, timeframes and geographical location. Thus, adding the '8041
patent to this action not only would complicate the logistics for both the parties and the Court,

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but would present a high risk of incurable jury confusion." For the reasons set forth in Pentair's •
Memorandum [DE-73] and Reply [DE-120] in support of the instant motion, and in the interestS
of justice, Pentair's alternative Motion to Sever and to Transfer the '804 Patent Counterclaim
contained in [DE-50] is ALLOWED. Hayward will have its opportunity to prosecute the '804
Patent infringement allegations in the Central District of California where litigation already is
pending, where the accused products purportedly are manufactured, and where access to
"separate fact and expert discovery and claim construction and the great weight of the evidence
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and witnesses pertinent to defending the '804 [Patent] Counterclaim are located ...." Pentair's
Reply [DE-120], p. 9.
SUMMARY and ORDER

Pentair's Motion to Strike or, Alternatively, to Sever and Transfer [DE-72] is DENIED in
part and ALLOWED in part. The Motion to Strike Hayward's Amended Answer and
Counterclaims [DE-50] is DENIED. However, Pentair's Motion to Sever Claim IX contained in
Hayward's Amended Answer and Counterclaims is ALLOWED. It is ORDERED that Claim IX
SEVERED from Hayward's Amended Answer and Counterclaims [DE-50], and the Clerk of
Court is DIRECTED to cause Claim IX only to be TRANSFERRED to the district court for the
Central District of California in which the action styled, Pentair Water Pool and Spa, Inc. v.

Hayward Industries, Inc., and Hayward Pool Products, Inc., No. 2:CV-ll-I0280-GW-FMO, is
pending. The Clerk of Court also is DIRECTED to terminate [DE-77], in light of [DE-90].
SO ORDERED.
This, the 30th day of January, 2012.

SC.FOX
or United States District Judge

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