Avco Corporation v. Precision Airmotive LLC

Filing 420

ORDER - IT IS HEREBY ORDERED that Plaintiff's 409 Motion to Clarify is DENIED and Plaintiff's 413 Motion for TRO is DENIED. Signed by Honorable Matthew W. Brann on 7/23/2019. (jr)

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
No. 4:12-CV-01313

AVCO CORPORATION,
Plaintiff-Counterclaim Defendant,

(Judge Brann)

v.
TURN AND BANK HOLDINGS, LLC,
and PRECISION AIRMOTIVE, LLC,
Defendants-Counterclaim
Plaintiffs,
v.
AVSTAR FUEL SYSTEMS, INC.,
Counterclaim Defendant.
ORDER
JULY 23, 2019
Plaintiffs have two motions pending before this Court: (1) a Motion for
Clarification, or in the Alternative, Leave to File Motion for Summary
Adjudication;1 and (2) a Motion for a Temporary Restraining Order and Preliminary
Injunction.2 Both will be denied.

1

ECF No. 409.

2

ECF No. 413.

The factual background for this case is detailed in this Court’s April 9, 2018,
Memorandum Opinion3 and Order4 on the parties’ cross-motions for summary
judgment. That background will not be repeated here. Instead, it is sufficient to
recall that this case concerned the legality vel non of Plaintiffs’ use of fuel injector
model numbers that had been used by Defendants (and their corporate predecessors)
for decades. At the summary judgment stage, this Court found that Plaintiffs’ use
of those model numbers—all of which began with the three-letter prefix “RSA”—
violated Defendant’s trademark rights in those marks.
The Court later denied a request by Defendants to permanently enjoin
Plaintiffs from using the RSA marks, since the submitted evidence showed that
Plaintiffs had switched to new model numbers. That denial was without prejudice
to Defendants asking for such injunctive relief when it came time to fashion a
remedy after the resolution of all remaining legal issues in the case—i.e., after a
finding on damages.
Plaintiffs now seek a clarification of this Court’s previous rulings or, in the
alternative, a chance to submit another motion for summary judgment. As noted,
Plaintiffs have ceased using Defendants’ exact model numbers. Instead, Plaintiffs
have replaced the three-letter prefix (“RSA”) of Defendants’ model numbers with a

3

ECF No. 356.

4

ECF No. 357.

different three-letter prefix (“LFC”). For example, a fuel injector that Plaintiffs
believe is similar to Defendants’ “RSA-10AD1” fuel injector and which used to be
labelled and sold by Plaintiffs as “RSA-10AD1,” is now labelled and sold by
Plaintiffs as “LFC-10AD1.” Plaintiffs ask this Court to “clarify” that its previous
ruling on the illegality of Plaintiffs’ use of the RSA marks was simultaneously a
ruling on the legality of Plaintiffs’ use of the LFC marks.
Stating the matter that way, it is clear that Plaintiffs want more than a
“clarification.” Rather, Plaintiffs are seeking to amend their complaint to include a
claim for declaratory relief vis-à-vis the legality of the LFC marks, and a summary
adjudication on that claim without the benefit of discovery.
Plaintiffs argue that the LFC issue “has already been considered by this
Court.”5 Plaintiffs are incorrect. All three complaints filed by Plaintiffs have been
focused on marks containing the RSA prefix, and contain no mention of the LFC
prefix.

Likewise, for Defendants’ counterclaims and cross claims.

In fact,

Defendants’ counter- and cross claims are based, in part, on the RSA prefix standing
alone. All the arguments made, and evidence presented, at the summary judgment

5

Plaintiffs’ Motion for Clarification at 2.

stage concerned Plaintiffs’ use of marks containing the RSA prefixes. And again,
some of that evidence focused on the RSA prefix standing alone.6
Plaintiffs repeatedly point to this language in this Court’s summary judgment
opinion, which they believe shows that the LFC issue has already been considered,
and ruled upon in Plaintiffs’ favor:
This would be a different case entirely if AVStar were labelling its
servo models, say, as “AVS-RSA-5AD1” or “AVS-RSA-10AD1.”
A plain reading of that language shows the error in Plaintiffs’ argument. Plaintiffs’
use of model numbers beginning with LFC is indeed a different case entirely from
the case that has been litigated here for the better part of a decade.
Plaintiffs’ request for “clarification,” therefore, will be denied. For those
same reasons—the consistent focus, throughout years of litigation, on marks
containing the RSA prefix—Plaintiffs’ request to submit a motion for summary
judgment on the issue of the LFC marks’ legality will be denied. The denial of that

6

See ECF No. 332-22 (“RSA-5 and RSA-10 Fuel Injection Systems Operation and Service
Manual” labelled with the Bendix mark and featuring a large “RSA” on the cover).

requested relief renders Plaintiffs’ motion for injunctive relief moot7 and it will be
denied as such.8
Therefore, IT IS HEREBY ORDERED that:
1.

Plaintiff’s Motion to Clarify, ECF No. 409, is DENIED.

2.

Plaintiff’s Motion for Temporary Restraining Order, ECF No. 413, is
DENIED.

BY THE COURT:

s/ Matthew W. Brann
Matthew W. Brann
United States District Judge

7

Defendants sued Plaintiffs over the LFC marks in the United States District Court for the
Middle District of North Carolina. Plaintiffs’ motion for injunctive relief, ECF No. 413, asked
this Court to enjoin that lawsuit (1) pending resolution of Plaintiffs’ motion for clarification
and (2) pending resolution of any further summary judgment briefing that might be permitted
by this Court. Because this Court has resolved Plaintiffs’ motion for clarification and have
denied further summary judgment briefing, the request for injunctive relief becomes moot.
Because the LFC issue is not properly before this Court, it cannot be that Defendants’ decision
to litigate it in North Carolina was an unreasonable and vexatious multiplication of
proceedings. Therefore, Plaintiffs’ request to sanction defense counsel will also be denied.

8

Nothing in this Order should be construed as offering any opinion on the legality vel non of
Plaintiffs’ use of the LFC marks. And nothing in this Order (1) prevents Defendants from
seeking a permanent injunction forbidding Plaintiffs’ use of the LFC marks when it comes
time to fashion a remedy for Plaintiffs’ trademark violations or (2) prevents Plaintiffs’ from
arguing that such injunctive relief would be improper.