BASF AGRO B.V., ARNHEM (NL), ZURICH BRANCH v. MAKHTESHIM AGAN OF NORTH AMERICA, INC., et al
Filing
61
MEMORANDUM OPINION AND ORDER signed by CHIEF JUDGE WILLIAM L. OSTEEN, JR. on 07/27/2015. ORDERED that Defendants' Motion to Dismiss (Doc. 25 ) is DEFERRED to summary judgment or trial pursuant to Federal Rule of Civil Pro cedure 12(i). Defendants should submit their answer or otherwise respond within 14 days of the entry of this Memorandum Opinion and Order. FURTHER that the parties are to submit a joint proposed schedule for discovery for this action in conj unction with their schedule for discovery on remedies for Defendants' violation of the Consent Judgment as found in the contempt proceeding (1:14MC8). This discovery schedule should be filed with the court no later than August 21, 2015. FURTHER that the parties shall appear before this court for a discovery conference on September 17, 2015 at 9:30 a.m. in Courtroom 1.(Taylor, Abby)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
BASF AGRO B.V., ARNHEM (NL),
ZURICH BRANCH,
Plaintiff,
v.
MAKHTESHIM AGAN OF NORTH
AMERICA, INC. (MANA),
CONTROL SOLUTIONS, INC.,
and DO IT YOURSELF PEST
CONTROL, INC.
Defendants.
)
)
)
)
)
)
)
)
)
)
)
)
)
)
1:13CV422
MEMORANDUM OPINION AND ORDER
OSTEEN, JR., District Judge
Presently before this court is a Motion to Dismiss filed by
Defendants Makhteshim Agan of North America, Inc. (MANA),
Control Solutions, Inc. (“CSI”), and Do It Yourself Pest
Control, Inc. (“DIY”) (collectively “Defendants”). (Doc. 25.)
Plaintiff BASF has filed a response (Doc. 29) to Defendants’
motion, and Defendants have replied (Doc. 31). This matter is
now ripe for resolution, and for the reasons stated herein,
Defendants’ Motion to Dismiss (Doc. 25) will be deferred to
summary judgment or trial pursuant to Federal Rule of Civil
Procedure 12(i).
The allegations within BASF’s Complaint in this case run
parallel to the allegations made in BASF’s Motion for Contempt
for Importing and Selling Product Made by a Non-Conforming
Method (“BASF’s Second Motion for Contempt”). (1:14MC8 (Doc.
321).)
(See BASF’s Resp. (Doc. 29) at 7 (“It is this imported
fipronil product — which Defendants MANA and CSI now concede was
not made by the Currently Intended Process and which DIY is
selling — that is the subject of BASF's Complaint.”).)1
This court has entered a Memorandum Opinion and Order in
the parallel contempt proceedings, finding that Defendants MANA
and CSI are liable under BASF’s Second Motion for Contempt due
to their admitted import and sale of TaurusTM SC using fipronil
manufactured through a process other than the “Currently
Intended Process.”
The parties have been instructed to confer
and submit a joint plan for discovery on damages based on the
violation of the Consent Judgment.
In order to ensure an
orderly and efficient resolution of the contempt proceeding and
this patent infringement proceeding, this court finds it
necessary for the parties to conduct discovery that addresses
both the admitted violations of the Consent Judgment and any
alleged patent infringement.
1
Citations to the record refer to the 1:13CV422 docket,
unless otherwise noted. All citations to page numbers refer to
the page number in the bottom right-hand corner stamped during
the electronic filing process and as they appear on CM/ECF.
-2-
In deferring any ruling on Defendants’ Motion to Dismiss,
this court has determined that there are no issues on the face
of BASF’s Complaint that would require immediate dismissal.
Defendants’ Motion to Dismiss in this case is based in large
part on the preclusive effect of the Consent Judgment entered
between BASF, MANA, and CSI in case number 1:10CV276.
This
court does not find as a matter of law that the Consent Judgment
requires dismissal of this patent infringement suit at this
stage of these proceedings.
Defendants are correct that the
Consent Judgment provides that “Defendants and their affiliated
companies shall not infringe U.S. Patent No. 5,618,945 . . . .”
(Consent J. 1:10CV276 (Doc. 46) ¶ 10.)
Thus, any infringement
of the patent found in this case would also constitute a
violation of the Consent Judgment entered in the previous case.
However, this court does not find that this provision of
the Consent Judgment makes it such that a motion for contempt is
the only mechanism for prosecuting infringement of the patent by
Defendants.
On the face of the Consent Judgment entered into by
the parties, BASF only covenanted that (1) it would not claim
that Defendants’ Currently Intended Process violates its patent
and (2) it would not seek discovery in the earlier patent action
“relating to any processes for making Fipronil other than the
Currently Intended Process.”
(Id. ¶¶ 5-6.)
-3-
BASF has not sought
to do either of these things in this case.
Therefore, this
court finds it is not required at this point to dismiss BASF’s
patent infringement suit as being precluded by the Consent
Judgment entered into by the parties.
Defendants also argue that granting damages based on BASF’s
contempt motion along with damages based on patent infringement
would be duplicative and provide an impermissible double
recovery.
However, this issue is one better resolved at a later
stage of these proceedings.
This court notes that, based on the
allegations in BASF’s Second Motion for Contempt, the remedies
that may ultimately be ordered in the contempt proceeding could
resemble patent infringement remedies.
The similarities between
what will be awarded in the contempt proceeding and what could
be awarded in this patent infringement suit make it appropriate
for the parties to conduct discovery on the appropriate remedies
for the violation of the Consent Judgment simultaneously with
their discovery on patent infringement issues.
The parties will
be allowed to present evidence at the appropriate time to assist
this court in determining what remedies, if any, should be
awarded based on BASF’s Second Motion for Contempt and what
remedies, if any, would be appropriate in this case due to
patent infringement.
Thus, Defendants’ argument concerning a
potential double recovery for BASF does not provide a basis upon
-4-
which this court must dismiss BASF’s patent infringement case at
this point in the proceedings.
This court therefore finds that before it determines an
appropriate remedy in this patent infringement proceeding and
the parallel contempt proceeding, this case should be allowed to
proceed through discovery so that this court may determine what
remedy is appropriate based on Defendants’ admitted violations
of the Consent Judgment between the parties and what remedy may
be appropriate based on the allegations of patent infringement.
Moreover, discovery in both cases will allow this court to
structure an appropriate remedy that does not provide an
improper double recovery.
At the end of the discovery period,
the parties will be required to address all relevant issues of
law.
Those issues are to include, but will not necessarily be
limited to, the question of whether BASF is allowed to receive
remedies for patent infringement in addition to those received
through the contempt proceeding.
IT IS THEREFORE ORDERED that Defendants’ Motion to Dismiss
(Doc. 25) is DEFERRED to summary judgment or trial pursuant to
Federal Rule of Civil Procedure 12(i). Defendants should submit
their answer or otherwise respond within 14 days of the entry of
this Memorandum Opinion and Order.
-5-
IT IS FURTHER ORDERED that the parties are to submit a
joint proposed schedule for discovery for this action in
conjunction with their schedule for discovery on remedies for
Defendants’ violation of the Consent Judgment as found in the
contempt proceeding (1:14MC8). This discovery schedule should be
filed with the court no later than August 21, 2015.
IT IS FURTHER ORDERED that the parties shall appear before
this court for a discovery conference on September 17, 2015 at
9:30 a.m. in Courtroom 1.
This the 27th day of July, 2015.
_____________________________________
United States District Judge
-6-
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?