Josef Maatuk v. Emerson Electric, Inc. et al

Filing 94

Memorandum of Opinion and Order denying Plaintiff's 93 Application (Motion) for permission to file a reply of plaintiff to the reply memorandum of defendant's motion for summary judgment. IT IS SO ORDERED. Magistrate Judge Thomas M. Parker on 2/13/2019. (D,JJ)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF OHIO
EASTERN DIVISION
JOSEF MAATUK,
Plaintiff,
v.
EMERSON ELECTRIC, INC., et. al.,
Defendants.

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Case No. 1:16-CV-03023

MAGISTRATE JUDGE
THOMAS M. PARKER

MEMORANDUM OF OPINION
AND ORDER

On February 8, 2019,1 plaintiff, Josef Maatuk, mailed to the court an “application for
permission to file a reply of plaintiff to the reply memorandum of defendant’s motion to
summary judgment,” i.e., a motion for leave to file a sur-reply. ECF Doc. 93. Maatuk states that
he intends to argue in a sur-reply that: (1) defendant Therm-O-Disc (“TOD”) has improperly
asserted in this case that Maatuk’s patents (Nos. 5,730,026 and 5,908,985) were enabled and in
the public domain, when it had taken the contrary position that the ’026 and ’985 patents were
not enabled or in the public domain in an earlier case, Therm-O-Disc, Inc. v. Maatuk, N.D. Ohio
Case No. 1:00-cv-2105; (2) TOD used information that Maatuk supplied in inventing the device
in Patent No. 7,775,105; (3) the listed inventors of the ’105 patent, Prasad Khadkikar and Bernd
Zimmerman, perjured themselves in swearing that they invented the device in the ’105 patent
without contribution from Maatuk; (4) that he is entitled damages for the lost opportunity to
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It is unclear from the record whether Maatuk received notice of the court’s February 4, 2019, decision
granting TOD’s motion for summary judgment before he filed his motion for leave to file a sur-reply. See
CM/ECF for N.D. Ohio Case No. 16-cv-3023, margin notes dated Feb. 4, 2019 (indicating that a copy of
the court’s February 4, 2019, order was mailed to Maatuk on February 4, 2019).

license the ’105 patent and reputational injuries in being omitted as an inventor of the ’105
patent; and (5) if the ’026 and ’985 patents were prior art for the ’105 patent, TOD owes him a
licensing fee. ECF Docs. 93 and 93-1, Page ID# 1722–32.
I.

Motion to file a Sur-Reply
Although the Federal Rules of Civil Procedure and the Local Rules do not provide for

sur-replies, district courts have discretion to permit sur-replies in “appropriate circumstances.”
Key v. Shelby County, 551 F. App’x 262, 264–65 (6th Cir. 2014) (unpublished). Such
circumstances arise “[w]hen new submissions and/or arguments are included in a reply brief, and
a nonmovant’s ability to respond to the new evidence has been vitiated.” Seay v. Tenn. Valley
Auth., 339 F.3d 454, 481 (6th Cir. 2003). An unexplained delay in seeking leave to file a surreply may justify its denial. See Key, 551 F. App’x at 265 (stating that a district court need only
provide an “adequate,” and not indefinite, time to respond to new arguments in a reply brief).
Maatuk’s motion for leave to file a sur-reply is both untimely and meritless. Given that a
reply brief in support of a dispositive motion must be filed within 14-days after service of the
response, Maatuk’s unexplained one-month delay in seeking leave to file a sur-reply renders his
motion untimely. See Local Rule 7.1(e); see also ECF Doc. 89 (showing that the TOD filed its
reply brief on January 7, 2019). Moreover, Maatuk has not shown that TOD’s reply contained
new arguments, or that Maatuk’s ability to respond to TOD’s arguments was impaired. Here,
TOD raised both its arguments – that (1) the information in the ’026 and ’985 patents, if
considered at all in inventing the device in the ’105 patent, were prior art; and (2) that Maatuk
was not entitled to any damages – in its motion for summary judgment. ECF Docs. 87 and 87-1,
Page ID# 1443–45, 1455, 1465–66, 1470. Furthermore, Maatuk asserted in his response that:
(1) the ’026 and ’985 patents could not have been prior art because they were not enabled; and

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(2) that he was entitled to damages because his omission as an inventor of the ’105 patent
precluded him from licensing it and caused him reputational injury. ECF Doc. 88, Page
ID# 1566–69, 1573, 1582–86. Accordingly, Maatuk’s motion for leave to file a sur-reply is
DENIED as untimely and meritless.
II.

Motion to Alter or Amend the Judgment
Because pro se litigants’ pleadings are liberally construed, the court construes Maatuk’s

post-judgment motion for leave to file a sur-reply as a motion to alter or amend the judgment,
under Federal Rule of Civil Procedure 59(e). See Ottah v. Fiat Chrysler, 884 F.3d 1135, 1141
(Fed. Cir. 2018) (stating that pro se pleadings are liberally construed and held to less stringent
standards than formal pleadings by lawyers).
A trial court has discretion to alter or amend its judgment under Rule 59(e), when a
movant shows “extraordinary circumstances which justify relief.” Yuba Natural Resources, Inc.
v. United States, 904 F.2d 1577, 1583 (Fed. Cir. 1990); Bally Export Corp. v. Balicar, Ltd., 804
F.2d 398, 400 (7th Cir. 1986). A party may not use a Rule 59(e) motion “to raise new legal
arguments that could have been raised before the judgment was issued.” Roger Miller Music,
Inc. v. Sony/ATF Publishing, LLC, 447 F.3d 383, 395 (6th Cir. 2007); see also Sault Ste. Marie
Tribe of Chippewa Indians v. Engler, 146 F.3d 367, 374 (6th Cir. 1998) (stating that “[a] motion
under Rule 59(e) is not an opportunity to re-argue a case”). “Rather, a motion under Rule 59(e)
must either clearly establish a manifest error of law or must present newly discovered evidence.”
Roger Miller Music, Inc., 447 F.3d at 395 (internal quotation marks omitted).
An argument that the court erred in relying on a party’s argument that was inconsistent
with a position that it took in a prior case could, under certain circumstances, assert a manifest
legal error in the judgment sufficient to justify relief under Rule 59(e). See Roger Miller Music,

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Inc., 447 F.3d at 395. Such circumstances may arise when a party is judicially estopped from
asserting a position that is inconsistent with a position he successfully asserted in previous
litigation. See Edwards v. Aetna Life Ins. Co., 690 F.2d 595, 598–599 (6th Cir. 1982) (stating
that “[i]f the second tribunal adopted the party’s inconsistent position, then at least one court has
probably been misled”).
“Under 35 U.S.C. § 102(a)(1), prior art encompasses any matter that was patented,
described in a printed publication, or in public use, on sale, or otherwise available to the public
before the effective filing date of the claimed invention.” In re Enhanced Sec. Research, 739
F.3d 1347, 1354 (Fed. Cir. 2014) (noting that “prior art” is interpreted broadly). The key inquiry
in determining whether a document is “prior art” is whether the public has a means of accessing
the document. See id. (stating that even relatively obscure documents qualify as prior art if the
public has access to them).
As discussed above, Maatuk raised his arguments – that (1) the ’026 and ’985 patents
could not have been prior art because they were not enabled; and (2) that he was entitled to
damages because his omission as an inventor of the ’105 patent precluded him from licensing it
and caused him reputational injury – in his response to TOD’s motion for summary judgment.
Maatuk did not, however, assert that TOD’s argument – that the information in the ’026 and ’985
patents, if considered at all in inventing the device in the ’105 patent, were prior art – was
inconsistent with its argument in the prior lawsuit – that the ’026 and ’985 patents were invalid
because they lacked enablement. See ECF Doc. 89, Page ID# 1568–69, 1573; see also CM/ECF
for N.D. Ohio Case No. 1:00-cv-2105, Doc. 78, 1122–23 (TOD’s motion for summary judgment
on the grounds that the ’026 and ’985 patents were invalid because they lacked enablement).
Maatuk response to TOD’s summary judgment motion also did not argue that Khadkikar and

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Zimmerman perjured themselves, or that he was entitled to a licensing fee if the ’026 and ’985
patents were prior art to the ’105 patent. See generally ECF Doc. 89.
Maatuk is not entitled to relief under Rule 59(e). First, Maatuk’s motion is an improper
attempt to re-litigate his case by raising arguments that he could have, or did, raise in his
response to TOD’s motion for summary judgment. Roger Miller Music, Inc., 447 F.3d at 395;
Engler, 146 F.3d at 374. Here, Maatuk does not assert that the court committed any manifest
legal error in evaluating, or present any new evidence supporting, his arguments that he was
entitled to damages for lost licensing fees and reputational injury. See generally ECF Docs. 93
and 93-1, Page ID# 1722–32. Further, he has not submitted any new evidence supporting his
claims that Khadkikar and Zimmerman perjured themselves. See generally id. Moreover,
Maatuk has not explained why he could not have raised his arguments – that (1) TOD took
inconsistent positions in this case and prior litigation; and (2) Khadkikar and Zimmerman
perjured themselves – in his response to TOD’s motion for summary judgment. See generally id.
Finally, to the extent that Maatuk argues TOD owes him a licensing fee for using the ’026 and
’985 patents as prior art, his argument is squarely foreclosed by this court’s prior decision
invalidating the ’026 and ’985 patents. See CM/ECF for N.D. Ohio Case No. 1:00-cv-2105,
Doc. 89, Page ID# 2395–96; see also Concrete Unlimited, Inc. v. Cementcraft, Inc., 776 F.2d
1537, 1539 (Fed. Cir. 1985) (holding that a patent holder had the right to enforce his patent until
the patent was held invalid). Accordingly, Maatuk’s Rule 59(e) motion is DENEID as an
improper attempt to re-litigate his case by raising arguments that he could have, or did, raise in
his response to TOD’s motion for summary judgment.
Even if the court considered Maatuk’s argument that TOD took inconsistent positions in
this case and the earlier case, Maatuk has not shown extraordinary circumstances justifying relief

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from the judgment. Yuba Natural Resources, Inc., 904 F.2d at 1583; Bally Export Corp., 804
F.2d at 400. Here, TOD’s argument that the information in the ’026 and ’985 patents was prior
art merely asserts that ’026 and ’985 patents were among the information to which the public had
access before TOD applied for the ’105 patent. See In re Enhanced Sec. Research, 739 F.3d at
1354. Such an argument is not inconsistent with TOD’s successful argument the previous case,
that the ’026 and ’985 patents were invalid due to lack of enablement, because the invalidation of
the ’026 and ’985 patents did not render the invalid patents inaccessible. CM/ECF for N.D. Ohio
Case No. 1:00-cv-2105, Doc. 89, Page ID# 2395–96 (order invalidating the ’026 and ’985
patents after finding that Maatuk’s statements and Khadkikar’s declaration testimony supported
TOD’s argument that the ’026 and ’985 patents lacked enablement); see also In re Enhanced
Sec. Research, 739 F.3d at 1354. Further, the court did not make any decision in the previous
case regarding whether the ’026 and ’985 patents could be considered prior art to the ’105 patent.
See generally CM/ECF for CM/ECF for N.D. Ohio Case No. 1:00-cv-2105, Doc. 89. Thus, even
assuming that this court relied on TOD’s argument that the ’026 and ’985 patents were prior art
to the ’105 patent in granting TOD summary judgment, Maatuk has not shown that the court
committed manifest legal error in doing so. Roger Miller Music, Inc., 447 F.3d at 395.
III.

Conclusion
Because Maatuk has not explained his one-month delay in seeking to file a sur-reply, and

because he has not shown that TOD raised any new arguments in its response brief, Maatuk’s
motion for leave to file a sur-reply (ECF Doc. 93) is DENIED as untimely and meritless.
Further, to the extent that Maatuk’s motion could be liberally construed as a Rule 59(e) motion,
his motion is DENIED, because none of his arguments show extraordinary circumstances
justifying relief from the judgment.

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