Minitube of America Inc v. Reproduction Provisions LLC et al
ORDER signed by Judge J P Stadtmueller on 5/1/14: granting in part and denying in part 32 Plaintiff's Motion for Summary Judgment; granting in part and denying in part 45 Defendants' Motion for Summary Judgment; denying 73 Defendan ts' Motion for Relief pursuant to Rule 56(d); denying as moot 92 Defendants' Motion to Strike the deposition of Ludwig Simmet; and, granting 31 43 44 46 66 75 86 93 & 95 the parties' Motions to Seal. See Order. (cc: all counsel) (nm)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MINITUBE OF AMERICA, INC.,
Case No. 13-CV-685-JPS
REPRODUCTION PROVISIONS, LLC,
MINITÜB GMBH, and
MINITUBE INTERNATIONAL AG,
This is nominally a patent case (see Docket #4), and to be sure it does
involve allegations of patent infringement (see Docket #1, Exs. 1, 2). But, in
reality, it is best viewed as a multi-faceted business dispute between family
members. At its core, the case derives from competitive advances made by
one family-affiliated business—the Europe-centered Minitüb GmbH, and
various related entities—into the American market controlled by another.
Minitube of America, Inc., has controlled the American market for years, as
part of an informal agreement between its principals and the principals of
Minitüb GmbH. Seeing as those principals are all family members, there
likely was little urgency to formalize any understanding (explicit or implicit)
between the parties. Likewise, the principals of Minitube of America, Inc.,
probably never expected their European counterparts to begin encroaching
on the American market.
But, Minitüb GmbH did just that, leading Minitube of America, Inc.
to file this suit. (Docket #1). In turn, Minitüb GmbH filed a number of
counterclaims. (Docket #16).
Thus, now before the Court is a twisted gnarl of claims—patent,
trademark, business disputes, and more—that largely turn on the existence
and content of informal agreements between the parties. The parties, in turn,
have filed cross-motions for summary judgment (Docket #32, Docket #45),
which are fully briefed (Docket #47, #57, #67, #82, #87, #99) and thus ready for
To say that this case is complex would be a vast understatement. But
the Court has thoroughly reviewed the parties’ submissions and will do its
best to address the relevant facts and arguments in a manner that is both
thorough and succinct. To do so, the Court will begin by setting forth a
detailed version of the underlying facts. Thereafter, the Court will address
the substantive arguments and applicable law.
As already mentioned, the facts underlying this case are complex.
They involve informal business arrangements across continents between
family members, simmering tensions between those family members, and
still-evolving business decisions. Fortunately, the parties have stipulated to
certain facts. (Docket #30 (the statement of stipulated facts, which the Court
will refer to as “SF”)). But the parties continue to disagree over certain
events. (See, e.g., Docket #69, Ex. 1; Docket #79).1 Here, the Court sets out the
relevant background facts. After discussing the factual background, the
Court will recount the totality of the claims being alleged by the parties.
Those documents are, respectively, the parties’ responses to proposed
findings of fact. The Court will refer to the plaintiff’s proposed findings of fact
(Docket #40) as “PPFF,” and the defendant’s (Docket #49) as “DPFF.”
Page 2 of 68
Because the factual background of this case is so complex, the Court
divides this discussion into multiple parts. First, the Court provides some
background about the identity of the parties and their respective owners.
Second, the Court provides additional historic context by describing the
relationships between the parties and the properties owned by them. Third,
the Court recounts the more recent actions giving rise to this specific lawsuit.
Fourth, the Court discusses the recent sale of Minitube of America, Inc., to
For purposes of simplicity, the Court will refer to Minitube of
America, Inc., as “Minitube of America” for the remainder of this order.
Likewise, the Court will refer to Minitüb GmbH and its affiliated
entity—Minitube International AG (“MTI”)—as “Minitüb Germany,” and
will also refer to them collectively as a single company of the same name.
Minitube of America and Minitüb Germany are engaged in similar
business. Both develop, manufacture, and supply products that are used on
farms to assist in livestock reproduction. (SF ¶¶ 5, 8). For instance, both
companies manufacture products intended to assist in artificial insemination
and embryo transfer of livestock. (SF ¶¶ 5, 8).
Both companies are also owned by separate groups of family
members. Ludwig Simmet owns Minitube of America in conjunction with his
wife, Rebekah (and three trusts for Ludwig’s and Rebekah’s daughters). (SF
¶ 4). Minitube of America is a Wisconsin corporation and domiciled in
Verona, Wisconsin. (SF ¶ 3). Meanwhile, Ludwig’s brothers—Christian,
Florian, and Rudolf—own Minitüb Germany which is located in Tiefenbach,
Page 3 of 68
Germany. (SF ¶¶ 6–7, 10). Richard and Debra Shoenbeck are of no apparent
relations to the Simmets; they operate Reproduction Provisions, which is
registered as a Wisconsin LLC, and operates from Walworth, Wisconsin.
Reproduction Provisions, LLC, is also named as a defendant, but is
owned by a different group of individuals (SF ¶¶ 11–12); the Court will refer
to it as “Reproduction Provisions.” Reproduction Provisions distributes
artificial reproduction products for livestock, of the sort marketed by
Minitube of America and Minitüb Germany. (SF ¶ 41).
The Parties’ Relationship and Properties
This section provides pertinent historical information regarding: the
creation of Minitüb Germany and Minitube of America; the relationship and
operations between them; the properties owned and developed by them; and
additional information regarding the relationship between Minitube of
America and Reproduction Provisions.
Creation, Operations, and Relationships of
Minitüb Germany and Minitube of America
The Simmets’ father and mother established Minitüb Germany in
Germany in 1970.2 (SF ¶ 15). They retired in 1996. (SF ¶ 18).
Before their retirement, the seeds of this suit had been sown: in 1986,
Ludwig formed Minitube of America in Wisconsin, using funds from
Minitüb Germany to establish the business. (SF ¶ 17; PPFF ¶ 3; DPFF ¶ 4 and
Resp.). Christian, meanwhile, took over Minitüb Germany as CEO in 1993,
and operated the company in Germany. (SF ¶ 18).
At that time, the parents founded only Minitüb GmbH. Minitube
International, AG (MTI), was formed later to allow for a merger between the
American and German companies. (SF ¶ 26). That merger ultimately fell through.
(SF ¶ 27).
Page 4 of 68
At the time, this division did not create a problem. Indeed, the two
companies appear to have operated harmoniously in separate geographic
areas—Minitube of America in North America (beginning operations in
Canada in 1996 and Mexico in June 2001), Minitüb Germany in Germany and
elsewhere in the world—but collaborated on much of their manufacturing,
research and development, and sales. (SF ¶¶ 20, 23; PPFF ¶¶ 1 and Resp.
(establishing the location and time frame of Minitube of America’s
operations; the defendants dispute whether Minitube of America violated
agreements by operating in Canada and Mexico, but not that the company
did operate there), 6–7 and Resps. (making clear that encroachment in
Canada and Mexico was, at least, allowed by Minitüb Germany), 9 and Resp.
(establishing that Minitüb Germany generally sells its products throughout
the world, with the exception of the North American market); see also DPFF
¶¶ 3, 6–9 and Resp.). In fact, both companies typically marketed and sold the
same products and used the same trademarks, albeit in their separate
geographic areas. (SF ¶¶ 21, 23). Occasionally, the companies would even
purchase products from one another. (SF ¶ 22).3
Of particular relevance to some of the claims in this suit, the
companies would often share trade-sensitive information. For example,
Minitüb Germany shared information with Minitube of America about its
supplier of a certain chemical used in its products and other manufacturing
techniques. (See PPFF ¶¶ 54–59 and Resp.). In spite of that fact and the fact
The parties dispute whether Minitube of America was allowed to
manufacture products that Minitüb Germany typically manufactured and sold. (See
PPFF ¶ 13 and Resp.). But, for at least two years, Minitube of America
manufactured the US BAG product—the subject of the patent at dispute in this
case—and sold it to Minitüb Germany; this practice constituted a reversal of the
parties’ typical arrangement. (PPFF ¶ 13 and Resp.).
Page 5 of 68
that all other Minitüb Germany distributors sign agreements including a
confidentiality clause, Minitüb Germany never required Minitube of America
to sign written confidentiality agreements and were not extremely diligent
about marking information as a trade secret.4 (PPFF ¶ 88, 90 and Resp.).
Given the extreme closeness of the companies’ involvement with one
another, they discussed merging. (SF ¶ 25). In 2009, the companies formed
MTI with the hope that it would provide an appropriate structure for the two
companies to merge. (SF ¶ 26). Those discussions failed, though, and Minitüb
Germany seemingly began to operate MTI. (SF ¶ 27; see SF ¶¶ 28–29). Despite
the failure of merger negotiations, Minitube of America told its customers
that it would no longer present itself as affiliated with Minitüb Germany, but
that the companies would still cooperate in limited fashion. (DPFF ¶ 13 and
Resp.). In keeping with that representation, Ludwig asserted his right to sell
Minitube of America to a third party and sharply reduced orders from
Minitüb Germany between 2012 and 2013. (DPFF ¶¶ 14–15 and Resp.). In
fact, in a departure from the parties’ standard procedure, Minitube of
America began manufacturing US BAGs5 on its own in 2012, without
informing Minitüb Germany of that fact; thus, in 2013, Minitube of America
did not purchase any US BAGs from Minitüb Germany. (DPFF ¶¶ 37, 38).
Minitüb Germany asserts that it labeled “many documents for ‘in house
use’ over the course of” the companies’ relationship. (Response to DPFF ¶ 93).
The US BAG is a product based upon the ‘503 patent asserted in this case.
Page 6 of 68
Despite the companies’ significant economic entwinement and
occasionally antagonistic relationship, they never entered into any written
agreements with one another.6 (SF ¶ 24).
The ‘503 Patent
Ludwig and Christian—owners of Minitube of America and Minitüb
Germany, respectively—together invented a boar semen collection bag and
jointly received a patent thereon in 1999. (SF ¶¶ 30–31, 33). In spite of the fact
that they had co-invented the bag, they assigned the full and exclusive right,
title, and interest in the patent covering it—U.S. Patent No. 5,961,503 (“the
‘503 patent”)—to Minitube of America. (SF ¶¶ 30, 32, 33). In other words,
Christian relinquished his rights to the ‘503 patent, essentially doing so in
favor of Ludwig, by virtue of the fact that Ludwig owned and operated
Minitube of America, the recipient of those rights. (SF ¶ 32).
It is not clear exactly why Christian did so. However, from the facts,
the Court can surmise that there was likely an informal agreement between
Ludwig and Christian that Minitüb Germany would be allowed to market
the product based upon the ‘503 patent, which the parties call the US BAG.
(SF ¶ 30). Both Minitube of America and Minitüb Germany marketed the US
BAG, and apparently Christian was under the impression that he would
receive a perpetual license to sell the US BAG. (DPFF ¶ 33 and Resp.).
The parties disagree over the admissibility and import of a letter sent to
Ludwig from his father and mother, allegedly setting forth the basic terms of the
agreement governing the companies’ relationship. (DPFF ¶¶ 4–5 and Resp.).
Page 7 of 68
The Companies’ Trademarks
In addition to the ‘503 patent, Minitube of America also owns the
United States trademark to several marks it uses in promotion and products:
U.S. Reg. No. 2,038,251, covering
U.S. Reg. No. 2,051,949, covering
The Court will refer to this mark
as “the MOFA mark.”
U.S. Reg. No. 2,096,385, covering
The Court will refer to this mark
as “the ovum mark.”
U.S. Reg. No. 3,250,053, covering
U.S. Reg. No. 2,033,439, covering
U.S. Reg. No. 4,494,111, covering
It was not until June 9, 2013, that Minitube of America filed a trademark
application seeking to register the US BAG mark. (PPFF ¶ 27). Minitüb Germany
disputes whether Minitube of America should be entitled to exclusive license in
that mark, but there can be no dispute that the trademark was issued to Minitube
of America on March 11, 2014. (See PPFF ¶¶ 27–29 and Resp.).
Page 8 of 68
(SF ¶ 34; PPFF ¶ 27). Minitüb Germany also owns a U.S. trademark: in 2001,
it obtained U.S. Reg. No. 2,493,812, covering the ANDROSTAR trademark.8
(SF ¶¶ 35–37).
Minitube of America’s Prior Dealings with
The relationship between Minitube of America and Reproduction
Provisions is somewhat fraught and dates back to a time when Reproduction
Provisions operated under a different name. (See SF ¶¶ 13 (noting that
Reproduction Provisions was previously named Prairie Provisions, LLC),
39–40)). In 1999, Minitube of America sued Reproduction Provisions, then
known as Prairie Provisions, LLC, in the United State District Court for the
Western District of Wisconsin for infringing the ‘503 patent. (SF ¶ 40). A
settlement resulted in 2000, in which Reproduction Provisions agreed not to
make, use, offer, or sell any product infringing the ‘503 patent until the
expiration thereof. (SF ¶ 40).
Disputes Begin to Arise Between the Parties
After what appears to have been a bitter merger negotiation ending
in April of 2012 (PPFF ¶¶ 17–19 and Resp.), Minitüb Germany began to make
inroads into the North American market.
Minitüb Germany started in Mexico. There, in 2012, it hired two thencurrent and one then-former employees of Minitube Mexico (Minitube of
America’s Mexican subsidiary). (PPFF ¶¶ 34 and Resp.) Having done so,
Minitüb Germany then launched Mexitube, selling primarily the same
Minitube of America filed a petition to cancel the ANDROSTAR mark. (SF
¶ 38). That proceeding is stayed pending outcome of this case. (SF ¶ 38). The parties
disagree over the extent to which Minitüb Germany used the ANDROSTAR mark
and over who owns the ANDROCOLL mark in the United States. (PPFF ¶¶ 100–109
Page 9 of 68
products as Minitube of America. (PPFF ¶¶ 35–36 and Resp.). This
significantly impacted Minitube of America’s Mexican operations, reducing
its market share in the country. (PPFF ¶ 37).
Minitube of America began negotiations with a competitor that would
negatively affect the Minitüb Germany-Minitube of America distribution
relationship. (DPFF ¶ 16 and Resp.). Those negotiations ultimately led to a
“marketing cooperation agreement,” under which Minitube of America
would cooperate with its previous competitor in product offerings, technical
support, and customer service. (DPFF ¶ 17 and Resp.).
Given the percolating relationship between Minitube of America and
a former competitor, in May of 2013 Minitüb Germany entered into its own
separate agreement with a third party, naming Reproduction Provisions as
the exclusive distributor for all Minitube of America products to be marketed
in the United States and Canada.9 (SF ¶¶ 42–45). Minitüb Germany informed
Minitube of America of this arrangement on May 27, 2013, several days
before issuing a press release about the Minitüb Germany-Reproduction
Provisions relationship. (SF ¶ 28). In that same email, Minitüb Germany
expressed its desire to continue working with Minitube of America on
technical questions and creation of spare parts for machines. (SF ¶ 29).
However, Minitüb Germany made clear that Minitube of America would no
longer be able to purchase Minitüb Germany products directly from Minitüb
In fact, these agreements were entered by MTI, rather than Minitüb
Germany. The Court, however, refers to them as having been entered by Minitüb
Germany for the sake of narrative simplicity.
Page 10 of 68
Germany, but would instead need to make those purchases through
Reproduction Provisions.10 (SF ¶ 29).
Shortly after the Minitüb Germany-Reproduction Provisions
relationship was finalized, the 2013 World Pork Expo was held in Des
Moines, Iowa. (SF ¶ 46). There, Reproduction Provisions obtained a booth
and represented itself as “Exclusive Distributor for Minitube International,
AG Germany.” (SF ¶ 46). In keeping with that representation, Reproduction
Provisions displayed the following sign:
This represented a significant departure from the parties’ ordinary course
of business, in which they would regularly make purchases directly from one
another. (SF ¶ 22).
Page 11 of 68
(SF ¶ 46). Reproduction Provisions also demonstrated the Minitüb Germany
version of the US BAG product, distributing at least forty samples. (PPFF
¶¶ 45, 47 and Resp.).11
The Minitüb Germany-manufactured version of the US BAG, shown
and distributed at the Expo, is extremely similar to the Minitube of Americamanufactured version. (See PPFF ¶¶ 75–76). Both use the ovum mark and
other similar design features and include the (obviously similar) name of the
One of Minitube of America’s employees engaged in the questionable
tactic of approaching Reproductions Provisions’ booth, where he lied that he was
a buyer from Canada and allegedly received an offer for sale of the Minitüb
Germany version of the US BAG. (DPFF ¶ 26). The Court has reservations about the
alleged deceptiveness of this tactic, and also believes that the circumstances
(similarity between the companies’ names and lack of certainty about exact
wording of the offer (see Resp. to PPFF ¶ 51)) call into question the validity of the
Page 12 of 68
(See, e.g., PPFF ¶ 76 (citing C. Simmet Dep. 89:13-18); Compl. ¶ 27).12
On the last day of the Expo, Minitube of America delivered a ceaseand-desist letter to Reproduction Provisions, stating that Reproduction
Provisions was infringing Minitube of America’s patent and trademarks.
(PPFF ¶ 61; DPFF ¶ 28). Reproduction Provisions complied with the terms
of that letter.
The cease-and-desist letter also affected other transactions between
Minitüb Germany and Reproductions. As part of their distribution
agreement, Reproduction Provisions ordered 20,000 Minitüb Germanyproduced US BAGs. (PPFF ¶ 69 and Resp.; DPFF ¶ 41). A third party took
possession of those bags in Germany with the intention of importing them
into the United States and then shipping them to Reproduction Provisions.
(PPFF ¶ 69 and Resp.). However, after receiving the cease-and-desist letter,
Minitüb Germany and Reproduction provisions worked with that third party
to redirect the shipment to Mexico (perhaps to avoid application of United
States patent law). (PPFF ¶ 69 and Resp.; DPFF ¶ 44 and Resp. (there is some
dispute over whether the shipment ever arrived in the United States)).
Despite having purchased Minitube of America-produced US BAGs
for several years, Reproduction Provisions has now entirely stopped such
purchases. (PPFF ¶¶ 63–64).
In addition to the similarity of the US BAGs, there is other evidence of
confusion resulting from the similarity in the companies’ names. In one instance,
Reproduction Provisions shipped several Minitüb Germany products to a customer.
(PPFF ¶ 81 and Resp.). The shipment was damaged and, at the very least, the
customer initially called Minitube of America regarding that damage, despite the
fact that Minitube of America was not the manufacturer of the products. (PPFF
¶¶ 81–82 and Resp.).
Page 13 of 68
Sale of Minitube of America
In December 2013, while this case was pending, Cooperative
Resources, Inc. (“Cooperative Resources”), offered to purchase Minitube of
America’s assets. (SF ¶ 47). Minitube of America agreed to the offer, and the
transaction was completed on February 28, 2014. (SF ¶ 48). The agreement
excluded the trademarks and ‘503 patent at play in this case, but Minitube of
America and Cooperative Resources entered a separate licensing and
assignment agreement allowing: (1) Cooperative Resources to exercise all of
Minitube of America’s rights in those properties; and (2) Minitube of America
to convey the rights it retains at the close of this dispute to a separate entity
created in the transaction. (SF ¶¶ 49–50).
The parties dispute whether Minitube of America has disclosed any
trade secrets to Cooperative Resources, but there can be little doubt that
Cooperative Resources now controls the former Minitube of America
business, which likely continues to utilize practices learned through the longterm relationship between Minitüb Germany and Minitube of America. (See
PPFF ¶¶ 54–59, 90–94, and Resp.; DPFF ¶¶ 18–19 and Resp.).
Minitube of America has also—at least temporarily—discontinued or
rebranded some of its products while this case has been pending. (DPFF ¶ 49
and Resp. (Minitube of America maintains that it has not permanently
discontinued or abandoned any of its marks—only that it has temporarily
stopped using those marks to avoid confusion)).
Minitube of America filed its complaint in this case on June 14, 2013.
(Docket #1). In its complaint, Minitube of America asserts the following six
claims against Minitüb Germany:
Page 14 of 68
infringement of the ‘503 patent, based upon Reproduction
Provisions’ alleged sale, offer for sale, or importation of US
BAGs from Minitüb Germany (Compl. ¶¶ 38–43);
false patent marking, based upon Minitüb Germany having
listed the ‘503 patent’s registration number on the versions of
the US BAG it produced and shipped to the United States
(Compl. ¶¶ 44–48);
trademark infringement, based upon the defendants’ allegedly
unauthorized use of Minitube of America’s trademarks
(Compl. ¶¶ 49–54);
false advertising under the Lanham Act, based upon defendants’
alleged representations that the Minitüb Germany-produced
US BAGs are superior to those produced by Minitube of
America, in conjunction with Minitüb Germany’s use of similar
or the same trademarks as those used by Minitube of America
(Compl. ¶¶ 55–63);
fraudulent misrepresentations under Wis. Stat. § 100.18, based
upon alleged misrepresentations to customers about the
companies’ products (Compl. ¶¶ 64–68); and
unfair competition, based upon the entirety of the defendants’
activities (Compl. ¶¶ 69–71).
Minitube of America seeks: monetary and punitive damages; injunctive
relief enjoining Minitüb Germany from continuing its current course of
conduct; and attorneys’ fees. (Compl. ¶¶ 72–77).
The defendants answered Minitube of America’s complaint, and
further asserted a number of counterclaims stemming from the same core set
of events that Minitube of America based its complaint upon. (Docket #16).
Specifically, the defendants allege the following five counterclaims:
Page 15 of 68
a claim for injunctive relief declaring that the defendants have
not infringed the ‘503 patent (Am. Answer and Counterclaim
misappropriation of trade secrets, based upon Minitube of
America’s alleged receipt and later disclosure of proprietary
business information (Am. Answer and Counterclaim
breach of contract, based upon Minitube of America’s disclosure
of confidential business information to third parties in violation
of alleged confidentiality agreements (Am. Answer and
Counterclaim ¶¶ 61–67);
trademark infringement, based upon Minitube of America’s
alleged use of the ANDROSTAR and ANDROCOLL
trademarks (Am. Answer and Counterclaim ¶¶ 68–78); and
tortious interference with contract, based upon: Minitube of
America’s cease and desist letter to Reproduction Provisions;
petition to cancel the ANDROSTAR mark; misappropriation of
trade secrets; and petition to the U.S. Patent and Trademark
Office to change the ownership of a pending patent application
(Am. Answer and Counterclaim ¶¶ 79–92).
The defendants seek a declaration that they have not infringed the
‘503 patent; monetary damages; and attorneys fees. (Am. Answer and
Counterclaim at 25–26).
Having set forth the totality of the claims being asserted by the parties
in this action, the Court now turns to address the pending motions for
Summary Judgment Standard
“The court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see also Anderson v.
Page 16 of 68
Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). “Material facts” are those
under the applicable substantive law that “might affect the outcome of the
suit.” Anderson, 477 U.S. at 248. A dispute over a “material fact” is “genuine”
if “the evidence is such that a reasonable jury could return a verdict for the
nonmoving party.” Id.
Substantive Analysis of Claims
The Court now turns to its substantive analysis of the summary
judgment motions. It will analyze each of the parties’ claims, but first must
address the defendants’ argument that Minitube of America lacks standing
to sustain its claims or the right to seek injunctive relief in this case.
Minitube of America’s Standing and Right to Seek
Standing “is an essential and unchanging part of the case-orcontroversy requirement of Article III.” Lujan v. Defenders of Wildlife, 504 U.S.
555, 560 (1992). Its basic elements are: (1) that the plaintiff alleges an injuryin-fact; (2) the injury is fairly traceable to the defendant’s unlawful conduct;
and (3) the injury is likely to be redressed by the relief the plaintiff seeks.
Lujan, 504 U.S. at 560–61; DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 342
(2006) (citing Allen v. Wright, 468 U.S. 737, 750 (1984)). Meanwhile, to be
entitled to injunctive relief, a plaintiff “must establish  that he is likely to
succeed on the merits,  that he is likely to suffer irreparable harm,  that
the balance of equities tips in his favor, and  that an injunction is in the
public interest.” Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)
(citing Munaf v. Geren, 553 U.S. 674, 689-690 (2008); Amoco Production Co. v.
Gambell, 480 U.S. 531, 542 (1987); Weinberger v. Romero–Barcelo, 456 U.S. 305,
311–312 (1982)). In eBay, Inc. v. MercExchange, LLC, the Supreme Court made
clear that this test applies in the patent context. 547 U.S. 388 (2006).
Page 17 of 68
The defendants make a number of arguments regarding standing and
Minitube of America’s right to seek relief, but never seem to hit upon a crisp
statement that fully encapsulates what they are trying to get across. Minitube
of America, in turn, has difficulty responding.
Here is what the Court understands the defendants to be arguing:
Minitube of America has not alleged past monetary injury;
therefore, it cannot establish that it has suffered an injury in
fact, in satisfaction of the first element of the standing test; and,
consequently, it allegedly lacks standing to pursue monetary
Minitube of America relinquished its patent and trademark
rights to a third party; therefore, it cannot establish that
Minitube of America, itself, will suffer any future injury;
accordingly, it has either failed to establish that it has suffered
an injury in fact in this regard or that it has suffered an injury
likely to be redressed by injunctive relief, thus failing to satisfy
either the first or third element of the standing test; and,
consequently, it allegedly lacks standing to pursue injunctive
Even if Minitube of America has standing to pursue injunctive
relief, it cannot possibly be entitled to that relief, because it has
assigned away its patent and trademark rights, and therefore
cannot establish that it would be irreparably injured in the
absence of an injunction, as required to satisfy the first element
of the injunction test.
The defendants jumble the first two of those issues together in their
briefs, which only confuses matters. (Docket #57, 5–8). “In essence the
question of standing is whether the litigant is entitled to have the court
decide the merits of the dispute or of particular issues.” Warth v. Seldin, 422
U.S. 490, 498 (1975) (emphasis added). In other words, a party’s standing to
seek relief may vary issue-by-issue; standing is evaluated on a claim-by-claim
basis. DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 352 (2006) (“our standing
Page 18 of 68
cases confirm that a plaintiff must demonstrate standing for each claim he
seeks to press.”).
That is particularly important to remember here because the standing
analysis changes with the type of relief sought. Minitube of America’s
assignment of its patent and trademark rights has very little to do with its
entitlement to redress for past monetary injury.13 Likewise, the existence or
non-existence of past damages does very little to establish that Minitube of
America should be entitled to an injunction going forward.14 See, e.g., Winter,
555 U.S. at 20 (plaintiff must show “that he is likely to suffer harm.” (emphasis
As to that last point, Minitube of America’s right to seek injunctive
relief, under the tests described in Winter, eBay, and other injunctive-relief
cases, plays a direct role in the Court’s analysis of Minitube of America’s
standing to seek injunctive relief. While the two analyses—standing and right
to injunctive relief—are distinct, a party’s right to injunctive relief certainly
affects the third element of the standing test: redressability.
Thus, the Court first analyzes Minitube of America’s standing to seek
monetary damages on its claims, and thereafter addresses its ability to seek
For instance, if an owner of a rental house sues a former tenant for
damages to that house, he does not lose his claim for relief by selling the house
while the case is pending.
To play off the prior example, the owner of that rental house should not
be entitled to an injunction prohibiting his former tenant from entering the rental
house if he no longer owns the rental house. Because he no longer owns the house,
the former owner either: (1) cannot be said to suffer an injury in fact, as he has no
stake in the upkeep of the house once he has relinquished ownership; or (2) would
not have any injury redressed by an injunction, because an injunction would only
address future injury, which he cannot suffer, as he has relinquished ownership.
Page 19 of 68
Standing to Seek Monetary Relief
The defendants argue that Minitube of America lacks standing to
pursue monetary relief because it alleges no past monetary injury and thus
asserts no injury in fact. (Docket #57, 5).
The Court disagrees with the defendants’ position. To begin, Minitube
of America makes clear that it is asserting claims that it believes entitle it to
monetary damages. (Docket #67, at 3 (citing PPFF ¶¶ 63, 69, 77–78, 81–83)).
Minitube of America is correct. In the paragraphs it cites, it points to alleged
past violations of patent and trademark laws by the defendants. (See PPFF
¶¶ 63, 69, 77–78, 81–83).
Minitube of America is the proper party to assert those claims. See, e.g.,
Moore v. Marsh, 74 U.S. 515, 522 (1869) (“right of action is given to the person
or persons owning the exclusive right [to the patent] at the time the
infringement is committed”); Crown Die & Tool Co. v. Nye Tool & Mach. Works,
261 U.S. 24, 40 (1923); Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574, 1579
(Fed. Cir. 1991). “Assignment or termination of the proprietary interest in the
patents-in-suit does not abrogate this right of action unless it is also
accompanied by an explicit assignment of all causes of actions, including the
right to sue for past infringement.” Alloc, Inc. v. Pergo, Inc., 572 F. Supp. 2d
1024, 1028 (E.D. Wis. 2008) (citing Schreiber Foods v. Beatrice Cheese, Inc., 402
F.3d 1198, 1202–03 (Fed. Cir. 2005)).
Moreover, if Minitube of America can prove up its patent and
trademark infringement cases, then it will be entitled to receive damages;
Minitube of America maintains that it has suffered damages, and
certainly—if nothing else—its corner on the American market may have been
reduced by the defendants’ infringing activities leading to a reduction in
Page 20 of 68
value. There is other evidence of damages: despite having purchased
Minitube of America-produced US BAGs for several years, Reproduction
Provisions has now entirely stopped such purchases. (PPFF ¶¶ 63–64);
Minitube of America has also—at least temporarily—discontinued or
rebranded some of its products while this case has been pending (DPFF ¶ 49
and Resp.), which certainly entails costs.15
Because Minitube of America is the appropriate party to seek
monetary damages and has asserted facts that would support such an award,
the Court finds that Minitube of America has standing to prosecute those
Injunctive Relief Standing
On the other hand, Minitube of America runs into problems right out
of the gate on its request for injunctive relief. “[E]ven when the plaintiff has
alleged injury sufficient to meet the ‘case or controversy requirement, this
Court has held that the plaintiff generally must assert his own legal rights
and interests, and cannot rest his claim to relief on the legal rights or interests
of third parties.” Warth, 422 U.S. at 499–500 (citing Tileston v. Ullman, 318 U.S.
44 (1943); United States v. Raines, 362 U.S. 17 (1970); Barrows v. Jackson, 346
U.S. 249 (1953)).
Minitube of America has relinquished its legal rights in favor of
Cooperative Resources, and therefore is no longer asserting its “own legal
rights and interests,” insofar as it seeks injunctive relief. Minitube of America
has no legal interest in its own patents and trademarks: it has fully licensed
them to Cooperative Resources for the pendency of this suit (see, e.g., Docket
Of course, at trial, it will be Minitube of America’s burden to prove up any
of these damages, which may not be very substantial.
Page 21 of 68
#64, Ex. AA, ¶¶ 1.11, 2.1, 3.1; Ex. TT ¶ 2.3(k) and Sch. 2.3(k)) and agreed to
convey the entirety of its remaining rights to a Cooperative Resources-owned
entity immediately upon the outcome of this suit (SF ¶ 50). Thus, it simply
is not the right party to seek injunctive relief.
Minitube of America, itself, would not suffer any injury-in-fact if the
defendants use its intellectual property—rather, Cooperative Resources
would suffer that injury. Likewise, because Minitube of America would
suffer no injury, any injunctive relief that this Court may issue could not
redress its injury. Finally, because Minitube of America would suffer no
injury if the defendants were to continue using its intellectual property, it
cannot establish that it is likely to “suffer irreparable harm.” E.g., Winter, 555
U.S. at 20. Thus, it cannot satisfy the test for an injunction; the Court, in turn,
cannot grant it the redress it seeks.
For these reasons, the Court is obliged to hold that, in its claim for
injunctive relief, Minitube of America cannot satisfy the first or third
elements of the standing test. Accordingly, Minitube of America lacks
standing to maintain its claims for injunctive relief, and the Court must grant
the defendants’ motion for summary judgment in that regard.
Nonetheless, having determined that Minitube of America has
standing to seek monetary damages, the Court must still address the
defendants’ motions for summary judgment on Minitube of America’s claims
for monetary relief. Accordingly, the Court still must analyze all of the
parties’ substantive claims to determine whether any are appropriately
dismissed at this summary judgment stage.
Page 22 of 68
Patent Infringement Claims
Minitube of America’s and the defendants’ respective first claims are
mirror images of one another: Minitube of America seeks a finding that the
defendants have infringed the ‘503 patent, whereas the defendants seek a
declaratory judgment holding the opposite. (E.g. Compl. ¶¶ 38–43; Am.
Answer and Counterclaim ¶¶ 41–47). The Court, therefore, addresses them
Doing so, the Court begins by describing what is not at issue. First, the
parties agree that the validity of the ‘503 patent is not at issue. (PPFF ¶ 66 and
Resp.; Docket #102). Likewise, claim construction and literal infringement is
not an issue, because the defendants acknowledge that the Minitüb
Germany-manufactured US BAGs practice the claims of the ‘503 patent.
(PPFF ¶¶ 67, 72 and Resp.; Docket #102).
Thus, the single, broad question remaining on the patent issue is
whether the defendants have violated the terms of 35 U.S.C. § 271(a):
“whoever without authority makes, uses, offers to sell, or sells any patented
invention, within the United States or imports into the United States any
patented invention during the term of the patent therefor, infringes the
Answering that question is not simple, though. It first requires an
analysis of whether, over the course of the companies’ informal relationship,
Minitüb Germany may have received some form of license from Minitube of
America to use the ‘503 patent. If that is the case, then Minitüb Germany
could not be said to be “without authority,” as is required to satisfy the terms
of 35 U.S.C. § 271. On the other hand, if there was no license or agreement,
then the Court must examine the defendants’ Expo-related activities—
Page 23 of 68
displaying and distributing Minitüb Germany-manufactured US BAGs at the
Expo—to determine whether they satisfy 35 U.S.C. § 271(a)’s prohibition on
making, using, selling, or offering to sell the product in the United States.
Likewise, the Court must determine whether there is enough evidence to
conclude that the defendants imported (or did not import) 20,000 US BAGs
into the country, which would also violate the terms of 35 U.S.C. § 271(a).
Existence of Agreement or License
The defendants’ primary argument in support of its contention that
it did not infringe the ‘503 patent is that they had a license to produce,
import, and sell products covered by the ‘503 patent. (Docket #57, at 9–12).
Issues of patent ownership and assignment are state law matters, and
therefore the Court must look to Wisconsin law to determine whether the
defendants had a license, as they contend. See, e.g., Beriont v. GTE Labs., Inc.,
535 Fed. App’x 919, 926-27 (Fed. Cir. 2013) (citing Enovys LLC v. Nextel
Commc’ns, Inc., 614 F.3d 1333, 1342 (Fed. Cir. 2010); Larson v. Correct Craft,
Inc., 569 F.3d 1319, 1327 (Fed. Cir. 2009); Jim Arnold Corp. v. Hydrotech Sys.,
Inc., 109 F.3d 1567, 1577 (Fed. Cir. 1997)).
The parties never entered into any written agreement with one
another that would govern the patent-licensing issue. Thus, the question is
whether, over the course of the long relationship between Minitüb Germany
and Minitube of America, an implied contract arose, under which the
defendants received a license to produce and sell products covered by the
‘503 patent in the United States.
The defendants are correct that contracts may arise orally or through
an implied meeting of the minds. (Docket #57, 9 (citing Cal. Wine Ass’n v. Wis.
Liquor Co. of Oshkosh, 20 Wis. 2d 110, 122, 121 N.W.2d 308 (1963); Theuerkauf
Page 24 of 68
v. Sutton, 102 Wis. 2d 176, 184–85, 306 N.W.2d 651 (1981))). So, if, over the
course of the parties’ relationships, Minitube of America—the owner of the
‘503 patent—agreed that the defendants could produce or sell covered
products in the United States, then some or all of the defendants would have
had the authority to do so, and therefore would not violate 35 U.S.C. § 271(a)
in doing so.
No such agreements exist here. Certainly, Reproduction Provisions
never received a license from Minitube of America, who actually obtained a
still-effective judgment prohibiting Reproduction Provisions from infringing
the ‘503 patent. But even Minitüb Germany never received the license
necessary to be entitled to produce and sell products covered by the ‘503
patent in the United States. Without a doubt, it is strange that Christian, a coinventor of the ‘503 patent, assigned all of his rights in the patent to Minitube
of America, receiving nothing in return. But, after he did so, Minitüb
Germany never attempted to enter the North American market with
products covered by the patent. Rather, Minitüb Germany marketed those
products throughout the rest of the world, leaving the North American
market alone. Indeed, it was not until after Minitube of America’s rejection
of Minitüb Germany’s efforts to acquire it that Minitüb Germany ever
asserted the right to act in the United States market; that action was followed
quickly by a cease and desist letter. Simply put, there is nothing in the record
to support the existence of an implied U.S. license granted from Minitube of
America to Minitüb Germany. The parties’ course of conduct shows
conclusively that they never agreed that Minitüb Germany should be granted
a license to sell or produce products that would be covered by the ‘503 patent
Page 25 of 68
in the United States.16 Thus, the Court is obliged to conclude that no license
Sale, Offer, or Importation
Because the defendants did not have a license to produce or sell ‘503covered products in the United States, the next question is whether the
defendants took some action that could be deemed infringement: production,
use, sales, or offers of covered products in the United States or importation
of covered products into the United States. See 35 U.S.C. § 271(a).
The parties seem to agree that there has not been production or use of
the products in the United States. (See Docket #67, at 14–19 (discussing only
sale, offer to sell, and importation)). Thus, there are two questions that the
Court must answer: (1) whether the defendants offered to sell infringing
products by distributing samples at the Expo; and (2) whether the defendants
sold or imported infringing products when they agreed to import 20,000 US
BAGs, which were possibly diverted to Mexico.
Offer for Sale at Expo
“An ‘offer for sale’ sufficient to give rise to liability for patent
infringement must meet the traditional contract law definition of that term.”
Superior Indus., LLC v. Thor Global Enterprises Ltd., 700 F.3d 1287, 1294 (Fed.
Cir. 2012) (citing Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1255 (Fed.
Cir. 2000)). To determine whether an action constitutes an offer, the Court
applies general contract law—including the Uniform Commercial Code (“the
UCC”), the Restatement (Second) of Contracts, Corbin on Contracts, and federal
Instead, the only logical interpretation of any implied agreement is that the
parties agreed that they would divide up the world market: Minitube of America
in North America and Minitüb Germany throughout the rest of the world.
Page 26 of 68
case law on the topic. See, e.g., Lacks Industries, Inc. v. McKechnie Vehicle
Components USA, Inc., 322 F.3d 1335, 1347-48 (Fed. Cir.2003); Group One, 254
F.3d at 1048. Those sources provide myriad ways to look for an offer.
The Restatement (Second) of Contracts defines an offer as “the
manifestation of willingness to enter into a bargain, so made as to justify
another person in understanding that his assent to that bargain is invited and
will conclude it.” Restatement (Second) of Contracts § 24.
Meanwhile, the Federal Circuit has made clear that the language used
by the parties in communicating with one another is one of the prime factors
in determining whether the requisite manifestation of intent exists. The
Federal Circuit states that “[l]anguage suggesting a legal offer, such as ‘I
offer’ or ‘I promise’ can be contrasted with language suggesting more
preliminary negotiations, such as ‘I quote’ or ‘are you interested.’ Differing
phrases are evidence of differing intent, but no one phrase is necessarily
controlling.”Group One, 254 F.3d at 1048. But language, alone, is not entirely
dispositive, according to the Federal Circuit. Instead, the Court must also
look to the circumstances surrounding the communication, such as any prior
dealings between the parties, whether their communications were private or
public, whether their communication occurred in reply to a request for an
offer, and the detail in the terms of the communications. See, e.g., Fisher-Price,
Inc. v. Safety 1st, Inc., 109 Fed. App’x 387, 392 (Fed. Cir. 2004) (citing 1 Corbin
on Contracts § 2.2 at pp. 1-2 (Joseph M. Perillo, Rev. ed. 1993); Restatement
(Second) of Contracts § 26, cmt. c (1981)). This requires that the defendant
manifest its willingness to enter an agreement that would justify a recipient
to determine that his acceptance of terms offered would conclude the
agreement. Superior Indus., 700 F.3d at 1294 (citing MEMC Elec. Materials, Inc.
Page 27 of 68
v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1376 (Fed. Cir. 2005)).
Accordingly, where communications from the defendant do not contain price
terms or other specifics required for a firm offer, the defendant’s
communications cannot be termed an offer for sale, because the recipient
could not make a binding contract by accepting the terms. Superior Indus., 700
F.3d at 1294 (citing MEMC, 420 F.3d at 1376).
Finally, it is very important to note that acceptance of an offer is not
required. “Rather, the focus of the inquiry is whether the offer could have been
made into a binding contract by formal acceptance.” E.g. Scaltech, 269 F.3d at
1328–1329; Honeywell Int'l Inc. v. Nikon Corp., 672 F. Supp. 2d 638, 644 (D. Del.
2009) aff'd sub nom. Honeywell Int'l, Inc. v. Nokia Corp., 400 Fed. App’x 557
(Fed. Cir. 2010).
At this point, the state of the record is not clear enough to grant either
party summary judgment on the issue. As is apparent from the law cited
above, the existence of an offer is a complex and fact-bound determination,
and the facts simply are not as clear cut as either party represents to the
Minitube of America’s strongest argument in favor of the existence of
an offer is that the defendants “handed out samples of the Minitüb US BAG,
a price list with a price for the Minitüb US BAG (among other MTI products
RP was also offering to sell) and an MTI catalog containing the Minitüb US
BAG.” Unfortunately, Minitube of America does not cite to the exact
evidence to prove up that claim (the Court assumes it appears at Docket #38,
Ex. C). Nor does either party discuss in any detail that evidence, the method
by which it was obtained, or the communications that took place between the
defendants’ representatives and potential customers at the Expo.
Page 28 of 68
To be clear, Minitube of America obtained the price list by sending a
representative, Steve Tardif, to the Expo. (See, e.g., DPFF ¶ 26; Resp. to PPFF
¶ 51). There, Mr. Tardif posed as a buyer from Canada and obtained
promotional materials from the defendants’ booth. (Docket #37, #38). One
piece of those materials was a news release and price list for Minitüb
Germany products being sold by Reproduction Provisions (Docket #38, Ex.
Minitube of America seems to believe that this price list alone is
enough to establish the existence of an offer. (Docket #67, 17). It is not. To
begin, the news release accompanying the price list states that “[w]e will
inventory products in our warehouse in Walworth, WI so that we can readily
ship orders out daily. Our company will also represent Minitube
International AG, Germany at various industry trade shows and exhibits
throughout the year.” (Docket #38, Ex. C (emphasis added)). That language,
speaking as it does of a future course of action, seems to weigh against the
existence of an offer. If the price list were meant as a demonstration of
Reproduction Provisions’ plans to offer Minitüb German products in the
future, then it could not be an offer, because customers could not have
accepted the sale on the spot.
That uncertainty in the purpose of the price list makes the
communications between Reproduction Provisions’ booth representatives
and Mr. Tardif all the more important.17 If the representatives told him that
The Court makes no finding, at this time, as to whether Mr. Tardif’s
testimony will even be admissible. If nothing else, given his allegedly dishonest
methods for obtaining information, Mr. Tardif will likely be subject to significant
impeachment upon cross-examination. All of this, however, may be a matter for
motions in limine prior to trial.
Page 29 of 68
the price list was tentative and intended for demonstration purposes only,
then the forward-looking language makes a good deal more sense:
Reproduction Provisions meant it only as forward-looking estimates about
what Reproduction Provisions planned to offer. In that case, it could not have
been a formal offer, because interested parties could not have accepted it and
made a formally binding contract. If, on the other hand, the representatives
explained that products were, for example, stocked and ready to ship or
currently being imported and ready for shipment soon, then there likely was
an offer for sale. Finally, if the representatives did not distribute the price
list—perhaps Mr. Tardif obtained it through unauthorized means or by
badgering the representatives until they provided it to him, when they did
not provide it to anyone else—then there likely was not an offer for sale. Any
of these occurrences is a distinct possibility.
Other evidence is also important. The shipping, return, and payment
terms on the first page of the price list certainly weigh in favor of the
existence of an offer. On the other hand, the notice that “[p]rices subject to
change without notice,” shows that the price list may have been meant as a
mere ballpark estimate of final prices; if Reproduction Provisions or industry
practice was such that prices changed regularly and without warning, then
the list would not even technically have provided prices, because a buyer
would have to call for a final price before being allowed to create a binding
contract (in this case, the price list would operate more as an invitation for an
There is simply too much at play, here—particularly in light of the
lack of clarity about Mr. Tardif’s encounters with Reproduction Provisions’
representatives—for the Court to decide the matter at this stage. The Court,
Page 30 of 68
therefore, must deny both parties’ motions for summary judgment on this
Whoever, without authorization, “imports into the United States any
patented invention during the term of the patent therefor, infringes the
patent.” 35 U.S.C. § 271(a). However, as the defendants correctly point out,
35 U.S.C. § 271(a) only reaches activities that occur in the United States.
(Docket #57, 15 (citing NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1313
(Fed. Cir. 2005))). So, if an individual were to ship a patented invention from
Germany directly to Mexico, that party could not be held liable for a
violation of 35 U.S.C. § 271(a), because—even if the product itself literally
infringed the patent—the importation did not occur in the United States. See
35 U.S.C. § 271(a). Likewise, only the party who actually imported the
product can be held liable for infringement. See, e.g., Cybiotronics, Ltd. v.
Golden Source Electronics, Ltd., 130 F. Supp. 2d 1152, 1174–75 (citing Pfizer, Inc.
v. Aceto Corp., 853 F. Supp. 104 (S.D.N.Y. 1994); Tec Air, Inc. v. Nippondenso
Mfg. U.S., 1997 WL 49300, at *3–*4 (N.D. Il. 1997); H.R. Rep. No. 60, 100th
Cong. 1st Sess. 6; S. Rep. No. 83, 100th Cong., 1st Sess. 48); Fellowes, Inc. v.
Michilin Prosperity Co., Ltd., 583–84 (E.D. Va. 2007) (citing Cybiotronics, 130 F.
Supp. 2d at 1174; NTP, 418 F.3d at 1314–15).
The Court is satisfied, however, that Minitüb Germany’s close interrelation
with Reproduction Provisions—culminating in a distribution agreement,
press release, and provision of promotional materials shortly before the Expo—
establishes clearly that Minitüb Germany: (1) knowingly induced Reproduction
Provisions’ alleged offer for sale; and (2) possessed the specific intent to encourage
that offer, such that it can be held liable for inducement under 35 U.S.C. § 271(b),
if there was, in fact, an offer for sale. See ACCO Brands, Inc. v. ABA Locks Mfr. Co.
Ltd., 501 F.3d 1307, 1312 (Fed. Cir. 2007).
Page 31 of 68
There are, thus, two questions to answer on this issue. First, were any
of the products even brought into the United States? If not, then the parties
could not possibly have violated 35 U.S.C. § 271(a)’s ban on unauthorized
importation. If so, then the Court must answer the second question: which
party actually imported the products into the United States?
The Court lacks sufficient evidence to determine the answer to the first
question. The defendants assert that, while the 20,000 US BAGs were in
transit from Germany to the United States, they had the shipper “remove the
US BAG order from the shipping container and send it to Mexico.” (Docket
#78, 14 (citing DPFF ¶ 44)). Unfortunately, the defendants have not provided
any definite evidence—tracking numbers, shipment information, etc.—to
support that assertion, and so the Court cannot grant it summary judgment
on the importation issue.
Minitube of America disagrees with the defendants’ assertion that the
US BAGs never arrived in the United States, but certainly does not make a
cogent case for its disagreement. (See Docket #87, 4; Resp. to DPFF ¶ 44). To
begin, in its response to the defendants’ forty-fourth proposed finding of fact,
Minitube of America asserts that the US BAGs actually did arrive in America,
and were shipped to Texas then on to Mexico. (Resp. to DPFF ¶ 44). Minitube
has absolutely no shipping information to support its disagreement. Instead,
it relies solely on a very unclear statement in the deposition of Rick
Schoenbeck. (See Resp. to DPFF ¶ 44 (citing Schoenbeck Dep. (Docket #59),
77:1–79:20)). In fact, Mr. Schoenbeck’s statement casts Minitube of America’s
position into doubt: after expressing much uncertainty about where the US
BAGs were shipped, noting only that they never arrived at Reproduction
Provisions, Mr. Schoenbeck only states that to “[t]he best of our knowledge
Page 32 of 68
they went to Texas and on to Mexico, but I don’t have any tracking numbers
or solid information.” (Schoenbeck Dep. 77:1–79:2). Seeing as Mr. Schoenbeck
did not work for the shipper and lacked any supporting information, the
“best of [his] knowledge” is practically none at all. It is not enough to support
Minitube of America’s position that the US BAGs arrived in Texas.
Additionally, Minitube of America casts its position further into doubt by
making a conflicting representation in its reply brief in support of its motion
for summary judgment. There, Minitube of America represents that “the
shipment of infringing products was imported into the United States and
then eventually diverted to Germany.” (Docket #87, 8). That statement is not
specific as to where the US BAGs arrived in the United States, and also
conflicts with Minitube of America’s other position, claiming that the US
BAGs eventually were transferred to Mexico. In sum, there is not enough
evidence to support Minitube of America’s motion for summary judgment
on the importation of the 20,000 US BAGs.
Whether the shipment of those 20,000 US BAGs can give rise to
infringement for importation, pursuant to 35 U.S.C. § 271(a), is a question
that must go to trial.
If Minitube of America can establish, however, that the bags did arrive
in the United States, then the Court finds that all three of the defendants may
be held liable under 35 U.S.C. § 271. Reproduction Provisions would be liable
as the importer, under 35 U.S.C. § 271(a), because it was the recipient of the
20,000 imported US BAGs from the third party. Minitüb Germany, on the
other hand, was at most the exporter of the goods (even that is somewhat in
question, as it contracted with a third party exporter to ship the goods to the
United States). The Court, however, finds that, if there was infringement by
Page 33 of 68
Reproduction Provisions’ importation, Minitüb Germany (and MTI by
extension) would be liable for inducement, under 35 U.S.C. § 271(b), given
its close distribution relationship with Reproduction Provisions. To allow
Minitüb Germany off the hook because it is technically only an exporter
makes little sense because Minitüb Germany actively contracted with an
American company to be its United States distributor, despite having full
knowledge of the potentially-infringing nature of its products. It had the
specific intent to enter the United States market to compete with the patentowner, Minitube of America, selling precisely the same product. This shows
that Minitüb Germany knowingly induced the importation with the intent
to infringe the ‘503 patent. establishing that it may be held liable for
inducement. E.g., 35 U.S.C. § 271(b); ACCO Brands, 501 F.3d at 1312.
One additional issue remains on the topic of importation: whether the
defendants should be held liable at this stage for importation of the 40
sample US BAGs that were distributed at the Expo. The Court finds that
summary judgment is not appropriate on this issue at this stage. Without a
doubt, those 40 samples had to be imported to the United States by someone
at some point. Otherwise, how would they have arrived here from Germany?
But the Court cannot grant summary judgment on this point, because the
parties have neither briefed the issue nor provided substantial evidence
regarding the importation of the items into the United States.19
Paragraphs 24 and 25 of the Defendants’ Proposed Findings of Fact make
clear that Reproduction Provisions received 100 sample US BAGs prior to the Expo,
but the parties have not provided any specific information about that receipt (or the
shipment to Reproduction Provisions). This leaves open the question of whether
Reproduction Provisions (or some other party or third party) “imported” the bags
and whether Minitüb Germany can be said to have induced such importation.
Page 34 of 68
Accordingly, the Court denies both parties’ motions for summary
judgment on the issue of infringement by importation.
De Minimis Non Curat Lex
The final argument the Court must address on the patent infringement
issue is whether the defendants’ actions were so minor that they should not
be held liable for patent infringement, under the common law doctrine of de
minimis non curat lex. (Docket #57, 14–15 (citing Collins & Aikman Corp. v.
Stratton Indus., Inc., 728 F. Supp. 1570, 1578 (N.D. Ga. 1989); Medtronic
Vascular, Inc. v. Boston Scientific Corp., 348 F. Supp. 2d 316, 322 (D. Del. 2004);
Baxter Diagnostics, Inc. v. AVL Scientific Corp., 798 F. Supp. 612, 629 (C.D. Cal.
1992); Pfizer, Inc. v. Int’l Rectified Corp., 217 U.S.P.Q. 157, 158 (C.D. Cal.
The defendants do not qualify for application of that doctrine because
any alleged infringement was commercial and not extremely limited.
Minitube of America correctly points out that the doctrine is generally
applied only in non-commercial contexts. (Docket #67 at 19–20 (citing Baxter,
798 F. Supp. at 620; Pfizer, 217 U.S.P.Q. at 158)).20 Seeing as all of the
defendants’ activities were directed to commercial ends—alleged offers for
sale at the Expo and alleged importation for eventual sale—the Court simply
cannot employ the doctrine, here.
The defendants seem to acknowledge as much, stating that “[i]n the
importation context, the doctrine applies where the acts of infringement are not
committed in furtherance of some commercial purpose.” (Docket #57 at 14 (citing
Medtronic Vascular, 348 F. Supp. 2d at 322; Baxter, 798 F. Supp. at 629)). Restating
that language to avoid the confusing use of the negative, the Court points out that
the defendants essentially acknowledge that the doctrine does not apply when the
infringement occurs to further some commercial purpose.
Page 35 of 68
False Patent Marking Claim Against the Defendants
Under 35 U.S.C. § 292, Minitube of America may recover damages
from the defendants by showing that the defendants, (1) without consent, (2)
marked a product offered for sale in the United States or imported into the
United States with the ‘503 patent number or the name or mark of Minitube
of America (3) with the intent of imitating Minitube of America’s ‘503 patent
or deceiving the public (4) such that Minitube of America “suffered a
competitive injury.” 35 U.S.C. § 292(a–b). In In re BP Lubricants USA, Inc., the
Federal Circuit made clear that parties seeking relief under 35 U.S.C. § 292
must state their claims with particularity under the heightened pleading
requirements of Rule 9(b) of the Federal Rules of Civil Procedure because
false patent marking under 35 U.S.C. § 292 is a form of fraud. 637 F.3d 1307,
1310–11 (Fed. Cir. 2011). To satisfy the particularity requirements of Rule
9(b), the “pleading must identify the specific who, what, when, where, and
how,” of the false patent marking claim. See, e.g., Exergen Corp. v. Wal-Mart
Stores, Inc., 575 F.3d 1312, 1318 (Fed. Cir. 2009) (discussing Rule 9(b) standard
in light of inequitable conduct claim); In re BP, 637 F.3d at 1311 (“Exergen’s
pleading requirements apply to all claims under Rule 9(b), not just
inequitable conduct cases.”).
The defendants argue that Minitube of America’s complaint did not
state the elements of its false patent marking claim with the requisite
particularity (Docket #57 at 16–18) and, further, that—even if its complaint
was sufficient—Minitube of America cannot establish its false patent marking
claim (Docket #57 at 19–20). Minitube of America responds, arguing that the
defendants waived their particularity argument by not raising it sooner
(Docket #67 at 20–21), that it complied with Rule 9(b)’s particularity
Page 36 of 68
requirements (Docket #67 at 21–22), and that its evidence can establish a false
patent marking claim. (Docket #67 at 21–22).
The Court will ignore Minitube of America’s waiver argument,
because it finds that Minitube of America’s complaint satisfies Rule 9(b)’s
particularity requirements. Minitube of America’s complaint alleges that
Minitüb Germany and Reproduction Provisions (the “who”) marked with
the ‘503 patent and offered for sale Minitüb Germany-produced US BAGs
knowing that Minitüb Germany did not own the ‘503 patent and without
consent to do so (the “what” and “how”) at the June 5, 2013, through June 7,
2013, Expo in Des Moines, Iowa (the “when” and “where”). (Compl. ¶¶ 6–7,
9, 20–22, 26–27, 46–47). This satisfies Rule 9(b)’s particularity requirements.
E.g., In re BP, 637 F.3d at 1310–12.21
Minitube of America can also show that the defendants are liable for
false patent marking. The defendants argue that Minitube of America cannot
succeed on this claim because: (1) the US BAGs were made five or more years
ago, at a time when Minitüb Germany had the authority to mark them with
the ‘503 patent’s registration number; and (2) that Minitube of America has
no evidence of the defendants’ intent. (Docket #57 at 19–20; Docket #96 at 14).
Both of those contentions are incorrect.
As to the first contention, the defendants do not cite any evidence that
actually supports it. (See Docket #57 at 19 (citing DPFF ¶¶ 24–25)). The
proposed findings it cites instead relate only to the distribution of the
Moreover, even if it did not satisfy the particularity requirement, the Court
would grant Minitube of America leave to amend its complaint to add particularity,
pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure, because justice so
requires. Despite the nearness to trial, had the defendants raised this objection to
the complaint in a more timely fashion, Minitube of America would have had
ample opportunity to amend its complaint.
Page 37 of 68
samples—not at all to when the samples were produced or whether Minitüb
Germany had authority to mark them at that time. (DPFF ¶¶ 24–25). Without
evidence on the fact from either party, the Court cannot enter summary
judgment on the basis that the products were produced at a time when
The second contention also does not support summary judgment. The
Court must credit all of Minitube of America’s evidence and draw all
justifiable inferences in its favor. Brilliant Instruments, Inc. v. GuideTech, LLC,
707 F.3d 1342, 1344 (Fed. Cir. 2013). Doing so, the Court must conclude that
there is at least ample evidence for Minitube of America to escape summary
judgment: the defendants were fully aware that Minitube of America is the
sole owner of the ‘503 patent; they were also aware that Minitube of America
had recently opted not to merge with Minitüb Germany, and still intended
to continue marketing its US BAG product in America; and, despite that
knowledge, the defendants marketed practically-identical US BAGs for sale
to the public. From that information, it would be reasonable to infer that the
defendants had the requisite intent, and the Court, therefore, may not grant
summary judgment in the defendants’ favor on this issue.
Perhaps Minitube of America will not be able to carry its burden to
show intent at trial. Perhaps the defendants will establish that the products
in question were marked at a time when authorization existed. But, at this
juncture, the Court cannot award summary judgment on either basis.
Trademark Infringement Claims
Both parties assert trademark infringement claims against one
another. The Court addresses them separately, as follows.
Page 38 of 68
Minitube of America’s Infringement Claim
Against the Defendants
With reference to Minitube of America’s trademark infringement
claims against the defendants, the parties have filed cross-motions for
summary judgment. That is, the defendants argue that the Court must
dismiss Minitube of America’s patent infringement claims, while Minitube
of America argues that it is entitled to judgment that the defendants
infringed its trademarks and that such infringement was willful.
The Court addresses the defendants’ motion first. Then, because it
finds that it must deny the defendants’ motion, it addresses Minitube of
Under 15 U.S.C. § 1127, a mark is abandoned when “its use has been
discontinued with intent not to resume such use.” The Court must look to the
circumstances to determine whether Minitube of America has the intent not
to resume use. 15 U.S.C. § 1127.
The defendants’ sole argument in support of their motion for
summary judgment on Minitube of America’s trademark infringement claims
is that Minitube of America abandoned its trademarks. It bases that
argument on two assertions: first, that Ludwig Simmet admitted that the
company was ceasing use of the marks in question; second, that Minitube of
America sold its assets to Cooperative Resources and entered into the License
and Assignment agreement. (Docket #57 at 20; Docket #96 at 12–13).
Objecting to the defendants’ first assertion, Minitube of America
argues that, even if it has discontinued the use of the marks in question, it did
not do so with “intent not to resume” using them. (Docket #67 at 22–24). The
Court agrees. Ludwig Simmet acknowledged temporary discontinuation of
Page 39 of 68
certain marks (Docket #64, Ex. H, at 197–98, 205–06, 233), but maintains that
is solely to avoid confusion caused by the defendants’ infringement and that
he intends to resume use. (Docket #64, Ex. H, at 198:2–199:10 (“we chose not
to use that name for right now” (emphasis added)); Docket #72, ¶¶ 14–18).22
Given that Minitube of America’s discontinuation of use of its marks is only
temporary, the Court cannot conclude that it has an “intent not to resume”
its use, and therefore Ludwig Simmet’s statement cannot form the basis for
a finding of abandonment.
The defendants’ second assertion—that Minitube of America
abandoned its marks by licensing and agreeing to transfer them to
Cooperative Resources—is a much closer call, but again Minitube of America
prevails. To begin, Minitube of America’s current license to Cooperative
Resources does not establish abandonment. Where a trademark owner
provides a “naked license” of its mark—that is, where it allows a licensee to
use a mark “without ‘exercising reasonable control over the nature and
quality of the goods, services, or business on which the [mark] is used by the
licensee’”—it has abandoned that mark. Eva’s Bridal Ltd. v. Halanick
Enterprises, Inc., 639 F.3d 788, 789–90 (7th Cir. 2011) (quoting Restatement
The defendants argue that the Court may not credit Ludwig Simmet’s
second declaration (Docket #72), because it is “self-serving, eleventh-hour,
contradictory…testimony.” (Docket #96 at 12 (citing Vandeveer v. Fort James Corp.,
192 F. Supp. 2d 918, 921 (E.D. Wis. 2002); Fed. R. Civ. P. 56(c)–(e); Fed. R. Ev. 402,
602)). To be sure, the Court must strike affidavit testimony not based on personal
knowledge and conclusory self-serving statements. Vandeveer, 192 F. Supp. 2d at 921
(citing Albiero v. City of Kankakee, 246 F.3d 923, 933 (7th Cir. 2001); Fed. R. Civ. P.
56(e)). But neither of those is the case, here. Ludwig Simmet’s declaration was made
on personal knowledge, as he knows Minitube of America’s business plans.
Moreover, while his declaration may be self-serving, it is not conclusory—it
actually comports with his prior statement that the company does not use the name
“for right now.”
Page 40 of 68
(Third) of Unfair Competition, § 33 (1995); citing Restatement (Third) of Unfair
Competition § 30; TMT North America, Inc. v. Magic Touch GmbH, 124 F.3d 876,
885–87 (7th Cir. 1997)). But, that is not what occurred here. In fact, under the
terms of the license agreement, Minitube of America and Cooperative
Resources agreed to the following terms regarding quality control:
Licensee agrees to make full and proper use of the Licensed
Trademarks and to endeavor to increase the reputation and
goodwill of the Licensed Trademarks. To control the quality of
any goods or services sold or offered for sale by Licensee
bearing the Licensed Trademarks, Licensor will have the right
to inspect, for quality control, all future advertisements,
packaging, labeling, and the products, as set forth herein.
Licensor shall have the right to inspect the labels, packaging,
and advertising of Licensee and its sublicensees on an annual
basis. Licensor retains the right to approve in advance any
material changes to the use by Licensee or its sublicensees of
the Licensed Trademarks.
(Docket #64, Ex. AA, ¶ 3.2). Thus, Minitube of America has retained an
appropriate measure of control necessary to establish that it has not
abandoned its mark through its current license. See, e.g. Restatement (Third)
of Unfair Competition, §§ 30, 33. As to the planned transfer of the marks, that
transfer has not occurred yet, and, in the meantime, Minitube of America
retains its trademark rights and control over their use; thus, as a matter of
fact, Minitube of America simply has not abandoned its marks.
For these reasons, the Court must deny the defendants’ motion for
summary judgment on Minitube of America’s trademark infringement
Page 41 of 68
Minitube of America’s Motion
Minitube of America seeks entry of a judgment that the defendants
infringed its trademarks, both registered and unregistered (Docket #47 at
8–14), doing so willfully (Docket #47 at 14–15).
To prove trademark infringement under 15 U.S.C. § 1125(a), “‘a
plaintiff must show (1) that its trademark may be protected and (2) that the
relevant group of buyers is likely to confuse the alleged infringer’s products
or services with those of plaintiff.’” H-D Michigan, Inc. v. Top Quality Service,
Inc., 496 F.3d 755, 759 (quoting Form Corp. of N. Am. v. Forum, Ltd., 903 F.2d
434, 439 (7th Cir. 1990)).
Minitube of America has satisfied the first of those two elements for
both its registered and unregistered trademarks. Minitube of America’s
trademark infringement claims cover both registered (the “MINITUBE”
mark, U.S. Reg. No. 2,038,251; the MOFA mark, U.S. Reg. No. 2,051,949; and
the ovum mark, U.S. Reg. No. 2,096,385 (Docket #47 at 8–9))
unregistered marks (the “US BAG” mark (Docket #47 at 12–14)).
As to the registered marks, their registration creates a rebuttable
presumption of their validity and protectability and Minitube of America’s
exclusive right to use that mark. See, e.g., 15 U.S.C. §§ 1065, 1115(a–b); CAE,
Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 672–73 (7th Cir. 2001). The
defendants have not even attempted to rebut that presumption. Those marks,
thus, satisfy the protectability element of a trademark claim.
Likewise, although the US BAG mark was unregistered at the time
that the defendants began to use it, the mark still satisfies the protectability
element. To begin, the mark is now registered, creating a rebuttable
Page 42 of 68
presumption of protectability which the defendants have not attempted to
overcome. 15 U.S.C. § 1115(a–b).
The second element of a trademark infringement claim—likelihood of
confusion—presents a much closer call. The Seventh Circuit generally looks
to the following seven factors to determine whether there is a likelihood of
the similarity between the marks in appearance and
the similarity of the products;
the area and manner of concurrent use;
the degree of care likely to be exercised by consumers;
the strength of the plaintiff’s mark;
any actual confusion; and
the intent of the defendant to “palm off” his product as that of
Bd. of Regents of University of Wisconsin Sys. v. Phoenix Intern. Software, Inc.,
653 F.3d 448, 454 (7th Cir. 2011) (citing AutoZone, Inc. v. Strick, 543 F.3d 923,
929 (7th Cir. 2008)). This is typically treated as a question of fact for the jury.
Bd. of Regents, 653 F.3d at 452 (citing AutoZone, 543 F.3d at 929). Thus, because
it is the movant on this issue, Minitube of America bears the burden to show
that—even with the Court drawing all reasonable inferences in favor of the
defendants—there are no genuine issues of material fact, and that the facts
require judgment in its favor. See, e.g., Brilliant Instruments, 707 F.3d at 1344;
Bd. of Regents, 653 F.3d at 452; Fed. R. Civ. P. 56.
That is a heavy burden to carry, but Minitube of America has done so.
The facts show very clearly that five of the seven factors are satisfied. To
begin, the parties’ marks are not only very similar—they are virtually
Page 43 of 68
identical. The defendants’ catalog contained various Minitube of America’s
trademarks and the US BAGs distributed at the trade show demonstrate this
clearly. Both bags feature an identical ovum mark and an identical version
of the US BAG mark. The square “minitüb” logo on the defendants’ US BAG
is extremely similar to the MOFA and MINITUBE marks: both are written in
very similar fonts and feature extremely similar words (“minitüb” versus
“minitube”) in lower-case letters.
The second and third factors are also satisfied. As to the second, the
products are not only similar—they are identical. Neither party has offered
any substantive difference between the products being offered. Likewise, as
to the third factor, the markets for the products are identical. Both products
are intended to serve the North American livestock reproduction market.
The fourth factor does not weigh clearly in favor of or against a
finding of infringement. This factor—the degree of care likely to be exercised
Page 44 of 68
by consumers—is somewhat difficult to analyze. That is because the products
are specialized. They are used in a very specific field, where consumers are
more sophisticated. See, e.g., Rust Env’t & Infrastructure, Inc. v. Teunissen, 131
F.3d 1210, 1217 (7th Cir. 1997). Consumers in that field may exercise a greater
deal of care, such that they would readily identify differences between the
parties’ competing products. However, with that said, there are other reasons
that consumers may not exercise that degree of care. For example, the US
BAGs are not the most expensive products offered by the defendants; a 100pack of US BAGs from the defendants is listed priced at $52.00, whereas the
defendants offer products costing far more (semen-collection systems at
$2,000.00 to $4,000.00; lab equipment ranging into the thousands of dollars).
(Docket #38, Ex. C). While the consumers in this field may be more
discerning, they are likely to be less so when adding the relatively low-cost
US BAGs to otherwise high-dollar-amount purchases. In other words, the
consumers of US BAGs are not likely to pay attention to the manufacturer of
US BAGs, which cost only about $50.00 per pack, when they may often be
making other, larger purchases. The Court, nonetheless, will not treat this
factor as favoring either side.
The fifth and sixth factors, on the other hand, favor a finding of
trademark infringement. As to the fifth factor, the plaintiff’s marks are
strong. When analyzing the strength of a mark, the Court asks whether the
mark tends “to indicate the origin of the product in the eyes of the
purchasing public,” or, in other words, “whether the mark is strong enough
that the public will form an association between the mark and the source of
that particular good.” Sullivan v. CBS Corp., 385 F.3d 772, 777 (7th Cir. 2004)
(citing McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1979);
Page 45 of 68
2 McCarthy, Trademarks and Unfair Competition § 11:73 (4th ed. 2003)).
Minitube of America has been using its marks for many years and,
undoubtedly, given the relatively small class of consumers they have been
selling to, an association has been formed between the marks and Minitube
of America as the source of products sold with those or similar marks.
Similarly, there has been actual confusion, seeing as one of the defendants’
purchasers of “Minitüb”-branded products called Minitube of America with
complaints about the shipping condition of those products. For these reasons,
the Court finds that both the fifth and sixth factors weigh clearly in favor of
a finding of trademark infringement.
Finally, the seventh factor does not clearly weigh in either direction.
That factor asks whether the defendants are trying to pass their products off
as having been manufactured by Minitube of America. The answer is likely
“no.” To be sure, the products have been marked “Minitüb,” as opposed to
“Minitube” or “Minitube of America.” But, clearly, the defendants are trying
to disrupt Minitube of America’s corner of the market by selling virtually
identical products. In the end, neither party has submitted substantial
evidence on this factor, and the Court will not treat it as favoring any
Nonetheless, the Court has found that five factors weigh strongly in
favor of a finding of trademark infringement; the remaining two factors do
not weigh in either direction. Given that balance, the Court finds that there
is little doubt that the defendants have violated Minitube of America’s
The next question is whether that infringement was willful. This
matters because the Court must award reasonable attorney’s fees in addition
Page 46 of 68
to treble damages if it finds that the defendants willfully infringed Minitube
of America’s trademark knowing their marks to be counterfeit. 15 U.S.C.
§ 1117(b). The only exception to that requirement is if the Court finds
“extenuating circumstances.” Id. There are, accordingly, three questions to
answer here: first, whether the defendants placed a “counterfeit” mark on
their products; second, whether they did so “willfully”; and, third, if the
Court has answered the first two questions in the affirmative, whether there
are “extenuating circumstances,” such that the Court should not enter an
award of attorney’s fees and treble damages against the defendants.
As to the first question, the defendants’ marks were not “counterfeit.”
In Gabbanelli Accordions & Imports, LLC v. Gabbanelli, the Seventh Circuit
discussed two opposing scenarios—the second constituting use of a
counterfeit mark, while the first does not:
For example, a product licensed to be sold only in Europe but
sold in the United States under the licensor’s trademark would
be a “grey market” good rather than a good sold by means of
a “counterfeit” mark.…But Italian Gabbanelli placed the
Gabbanelli mark on accordions made by a company that was
not authorized to manufacture accordions for sale in the
United States under the Gabbanelli name; this made its use of
the name counterfeiting.
575 F.3d 693, 698 (7th Cir. 2009) (citing Idaho Potato Commission v. G & T
Terminal Packaging, Inc., 425 F.3d 708, 722 (9th Cir. 2005); Louis P. Petrich,
Preliminary Injunctions and Temporary Restraining Orders in Copyright and
Trademark Infringement Cases: The Trademark Counterfeiting Act, 326 PLI/Pat
499, 570–71 (1991)). Under that formulation, the defendants’ use of the marks
more closely resembles the first situation, and therefore does not constitute
counterfeiting. At the very least, Minitüb Germany had a license to sell
products with the marks in question throughout the entire world, excluding
Page 47 of 68
North America. They did so for many years without any issue. Thus, this
situation seems to fall squarely within the Seventh Circuit’s first formulation.
It also does not fall into the second formulation, because Minitüb Germany
was authorized to manufacture accordions for sale in the United States under
the Minitube of America name. Again, they did so for years, with the
exception of a small window of time when Minitube of America performed
manufacturing services on behalf of both companies.
Having found that the first element of entitlement to relief under 15
U.S.C. § 1117(b) is not satisfied, the Court does not need to delve any deeper
into the willfulness argument.23 Minitube of America has not satisfied its
burden on this issue.
The Court makes two points on this issue. First, while Minitube of America
quoted 15 U.S.C. § 1117(a)’s language regarding exceptional circumstances, it never
fleshed out that argument or provided any support for a finding of exceptionality.
Therefore, the Court does not rule in either party’s favor on that issue.
Second, if the Court were to have found counterfeiting, it would have been
required to enter an award of attorney’s fees and treble damages pursuant to 15
U.S.C. § 1117(b). To begin, if even willful blindness can justify a finding of
willfulness under 15 U.S.C. § 1117(b), then willfulness would certainly be satisfied
here, given the defendants’ full awareness of Minitube of America’s trademark
rights. Lorillard Tobacco Co., Inc. v. A & E Oil, Inc., 503 F.3d 588, 592 (7th Cir. 2007),
overruled on other grounds by McCarter v. Ret. Plan For Dist. Managers of Am. Family
Ins. Grp., 540 F.3d 649 (7th Cir. 2008). Additionally, “extenuating circumstances”
exist only in “extreme cases—cases in which ‘the imposition of treble damages
would mean that [the defendant] would be unable to support his or her family.’”
Louis Vuitton S.A. v. Lee, 875 F.2d 584, 590 (7th Cir. 1989) (quoting Joint Statement
on Trademark Counterfeiting Legislation, 130 Cong.Rec. at H12083 (daily ed. Oct.
10, 1984); citing Fendi S.A.S. di Paola Fendi e Sorelle v. Cosmetic World, Ltd., 642 F.
Supp. 1143, 1147 (S.D.N.Y. 1986)). In any event, the existence of “extenuating
circumstances” is an affirmative defense and, therefore, is waived if the defendants
do not raise it. Lorillard, 504 F.3d at 595 (citing Louis Vuitton, 875 F.2d at 590). As the
Court will discuss further, the defendants did not raise this—or really any—defense
against Minitube of America’s motion for summary judgment on the trademark
infringement and willfulness issue. Accordingly, they waived it.
Page 48 of 68
For these reasons, the Court is obliged to grant Minitube of America’s
motion for summary judgment on its claim of trademark infringement,
leaving open the issue of damages for trial. However, the Court must deny
Minitube of America’s motion insofar as it seeks a finding of willfulness.
To close this section, the Court notes that the defendants largely
ignored Minitube of America's trademark infringement claims, arguing only
that Minitube of America abandoned the marks (Docket #82 at 20) and,
perhaps, that the trademarks were part of an implied license granted by
Minitube of America to the defendants (the implied-license argument is
made throughout the defendants’ briefs and proposed facts, and includes
arguments about the logo’s designer, Minitüb Germany’s use of the mark
outside of the United States, and Minitüb Germany’s role as a manufacturer
of Minitube of America’s products). The Court has already dispensed with
the abandonment argument. As to the implied-license argument, the Court
reiterates that there is simply no evidence that the parties ever reached any
agreement that would allow the defendants to use the trademarks in
question. No matter how involved Minitüb Germany may have been in the
creation of the trademarks and use outside of the United States, that does not
alter the fact that Minitube of America is the sole registrant of the marks and
that Minitüb Germany always operated as if it did not have a license to use
the trademark in the United States (showing that, if there was an implied
license, it did not provide for use in the United States). Finally, as the Court
mentioned in footnote 23, the defendants entirely ignored Minitube of
America’s 15 U.S.C. § 1117(b) arguments related to attorney’s fees and
damage-trebling. They were fortunate that the Court ultimately found for
Page 49 of 68
them on that issue, but it was not through their doing. As this case progresses
forward toward trial, such oversights may not come out quite as favorably.
The Defendants’ Infringement Claim Against
Minitube of America
The defendants allege an infringement claim against Minitube of
America. Unfortunately, in their brief opposing Minitube of America’s
motion for summary judgment on that claim, the defendants took the same
sort of blasé approach they applied to briefing Minitube of America’s motion
for summary judgment in its favor on its trademark infringement claims.
(Docket #82 at 23).
The defendants purport that Minitube of America has infringed the
defendants’ “ANDROSTAR” and “ANDROCOLL” marks. Minitube of
America argues that it could not have done so, because: (1) the defendants
never used the ANDROSTAR mark in the United States; and (2) Minitube of
America was entitled, under the first sale or exhaustion doctrine, to use the
The first of those arguments succeeds, and the Court will grant
Minitube of America’s motion for summary judgment on the defendants’
ANDROSTAR-based trademark infringement claim, dismissing that claim.
Minitüb Germany obtained U.S. Reg. No. 2,493,812, covering the
ANDROSTAR trademark, in 2001. (SF ¶¶ 35–37). Minitube of America is
currently challenging that registration. (SF ¶ 38). But, while that challenge is
pending, the registration of that mark creates a rebuttable presumption of its
validity and protectability and Minitüb Germany’s exclusive right to use and
license that mark. See, e.g., 15 U.S.C. §§ 1065, 1115(a–b); CAE, Inc., 267 F.3d at
672–73. Minitube of America has overcome that presumption. It is certainly
correct that registration, alone, determines ownership, but instead that use
Page 50 of 68
in commerce is most important. See, e.g., Central Mfg., Inc. v. Brett, 492 F.3d
876, 881 (7th Cir. 2007) (citing Zazu Designs v. L’Oreal, S.A., 979 F.2d 499, 503
(7th Cir. 1992)); Johnny Blastoff, Inc. v. Los Angeles Rams Football Co., 188 F.3d
427, 433–34 (7th Cir. 1999). “A party may acquire a protectable right in a
trademark only through use of the mark in connection with its product.” Id.
(citing Zazu, 979 F.2d at 503). This is accomplished by adoption of the mark
and use in a way to identify the goods to the public as those of the mark’s
alleged owner. Johnny Blastoff, 188 F.3d at 433–34 (quoting New West Corp. v.
NYM Co. of Cal., Inc., 595 F.2d 1194, 1200 (9th Cir. 1979)). Seeing as Minitüb
Germany never used its mark in the United States—instead, Minitube of
America was the only United States-based user—the Court finds that
Minitüb Germany never adopted the mark in the United States, meaning that
it never had a protectable interest therein. Moreover, because Minitube of
America was the United States-based seller of the ANDROSTAR-marked
items, Minitüb Germany never used the mark in a way to identify goods as
being its own. Accordingly, Minitube of America has shown that Minitüb
Germany never had a protectable interest in the ANDROSTAR mark. Thus,
Minitube of America could not have infringed that mark. Moreover,
Minitube of America’s established use likely satisfies 15 U.S.C. § 1115(b)(5)’s
terms, providing another way for Minitube of America to rebut the
presumption of validity. For all of these reasons, the Court is obliged to find
that Minitube of America did not infringe the asserted ANDROSTAR
Likewise, Minitube of America did not infringe the ANDROCOLL
mark. Under the first sale doctrine,
Page 51 of 68
resale by the first purchaser of the original article under the
producer’s trademark is generally neither trademark
infringement nor unfair competition…[because] “trademark
law is designed to prevent sellers from confusing or deceiving
consumers about the origin or make of a product, which
confusion ordinarily does not exist when a genuine article
bearing a true mark is sold.”
Enesco Corp. v. Price/Costco, Inc., 146 F.3d 1083, 1085 (9th Cir. 1998) (quoting
NEC Elecs. v. CAL Circuit Abco, 810 F.2d 1506, 1509 (9th Cir. 1987); citing
Sebastian Int'l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 1074 (9th Cir.
1995); Prestonettes, Inc. v. Coty, 264 U.S. 359, 368–69 (1924); Monte Carlo Shirt,
Inc. v. Daewoo Int'l (Am.) Corp., 707 F.2d 1054, 1058 (9th Cir. 1983)); see also
Societe Des Produits Nestle, S.A. v. Casa Helvetia, Inc., 982 F.2d 633, 644 (1st Cir.
1992); Warner–Lambert Co. v. Northside Dev. Corp., 86 F.3d 3, 6 (2d Cir. 1996);
Iberia Foods Corp. v. Romeo, 150 F.3d 298, 302–03 (3d Cir. 1998); Martin's
Herend Imports, Inc. v. Diamond & Gem Trading USA, Co., 112 F.3d 1296, 1302
(5th Cir. 1997); Davidoff & CIE, S.A. v. PLD Int'l Corp., 263 F.3d 1297, 1301
(11th Cir. 2001). That is precisely the case here: Minitube of America was the
first purchaser of ANDROCOLL products from Minitüb Germany, who of
course knew of Minitube of America’s intent to resell the products.
Therefore, Minitube of America’s use of the ANDROCOLL mark (assuming
it is protectable) in relation to its sales of ANDROCOLL products does not
constitute trademark infringement.
Accordingly, the Court is obliged to grant Minitube of America’s
motion for summary judgment on the defendants’ trademark infringement
Page 52 of 68
False Advertising Claim Against the Defendants
The Supreme Court recently discussed the rights of parties to sue for
false advertising under 15 U.S.C. § 1125(a). It held that “a plaintiff suing
under  U.S.C. § 1125(a) ordinarily must show economic or reputational
injury flowing directly from the deception wrought by the defendant’s
advertising; and that occurs when deception of consumers causes them to
withhold trade from the plaintiff.” Lexmark, Intern., Inc. v. Static Control
Components, Inc., --- U.S. ---, 134 S.Ct. 1377, 1391 (2014). That formulation is
generally concerned with the plaintiff’s ability to establish proximate cause,
as evidenced by the Supreme Court’s further statement that such “showing
is generally not made when the deception produces injuries to a fellow
commercial actor that in turn affect the plaintiff.” Id.
The defendants challenge Minitube of America’s right to sue for false
advertising on the basis that it lacks the right to do so. (Docket #57 at 20–21;
Docket #96 at 13–14). Doing so, they cite the Lexmark case, arguing that
Minitube of America must establish its injury to have the right to sue for false
advertising, pursuant to 15 U.S.C. § 1125(a). (Docket #96 at 13–14).
That is true, and Minitube of America cannot satisfy its burden.
Minitube of America asserts that it lost a regular purchaser of one of its
products after the defendants allegedly contacted that customer and falsely
informed the customer that Minitube of America would no longer be able to
supply that product. (Docket #70, ¶¶ 2–10). However, single assertion is
based on inadmissible hearsay: the declaration of Steve Gust on the topic
includes hearsay-within-hearsay, specifically his statement that he received
emails from a representative of Minitube of America's former customer
regarding communications from Reproduction Provisions. (Docket #70,
Page 53 of 68
¶¶ 2–10). The first layer of hearsay—the communications from Reproduction
customer—does not pose
communications regarded Minitube of America's inability going forward to
provide certain products. (See Docket #70, Ex. A). Minitube of America does
not offer the statement to prove its inability to provide products, and
accordingly those statements are not offered for the truth of the matter
asserted. On other hand, the second layer of hearsay—the customer’s
statements to Minitube of America that Reproduction Provisions had called
her—is inadmissible. The customer’s representative stated: “They
[Reproduction Provisions] informed me that MOFA will no longer have
these available per agreement with Minitube of Germany.” (Docket #70, Ex.
A). Minitube of America is introducing that statement to prove the truth that
the defendants called its former customer with incorrect information.
Accordingly, it is inadmissible hearsay.
However, even if that evidence were admissible, it still would not even
be probative of injury. Mr. Gust asserts that he called the customer’s
representative on September 27, 2013—the same day that the representative
sent the email in question—to address her concerns. (Docket #70, ¶ 6). Thus,
Minitube of America immediately corrected any misinformation; despite that
correction, the customer still withdrew its business from Minitube of
America. (See Docket #70, ¶¶ 6, 10). Thus, Minitube of America could not
possibly show that any alleged false statements caused its injuries.
Minitube of America, therefore, has not produced any evidence to
establish an injury for the purpose of showing it has a right to sue under 15
U.S.C. § 1115(a). Therefore, the Court will grant the defendants’ motion for
summary judgment on that claim and dismiss it.
Page 54 of 68
Fraudulent Representations Claim Against the
Minitube of America has agreed to dismiss its Wis. Stat. § 100.18 claim
for fraudulent representations. Accordingly, the Court will grant the
defendants’ motion for summary judgment on that claim.
Unfair Competition Claim Against the Defendants
To establish unfair competition, Minitube of America “must show that
a designation meets the definition of trademark or trade name and that the
defendant[s’] use of a similar designation is likely to cause confusion.”
Madison Reprographics, Inc. v. Cook’s Reprographics, Inc., 203 Wis. 2d 226, 234,
552 N.W.2d 440 (referring to unfair competition as “action at common law for
infringement of a trademark or trade name”) (citing First Wisconsin Nat’l Bank
v. Wichman, 85 Wis. 2d 54, 63, 270 N.W.2d 168 (1978) (which refers to action
as one for unfair competition); Restatement (Third) of Unfair Competition, § 20
(1995)). For all practical purposes, this test is the same as the one the Court
applied to the parties’ trademark infringement claims in Section 2.2.4, supra.
See, e.g., Rust Env’t, 131 F.3d at 1219 (citing Spheeris Sporting Goods, Inc. v.
Spheeris on Capitol, 157 Wis. 2d 298, 308, 459 N.W.2d 581 (Wis. App. 1990);
Sears, Roebuck & Co. v. Allstate Driving School, Inc., 301 F. Supp. 4, 15 (E.D.N.Y.
1969); Madison Reprographics, 203 Wis. 2d at 238).
The Court has already found that Minitube of America’s marks are
protectable and trademarked, and further that the defendants’ use of them
is likely to cause confusion. Accordingly, the Court must likewise hold that
Page 55 of 68
Minitube of America is entitled to summary judgment on its common law
unfair competition claim.24 Likewise, its damages remain a live issue for trial.
Misappropriation of Trade Secrets Claim Against
Minitube of America
The defendants assert that Minitube of America has misappropriated
Minitüb Germany’s trade secrets in violation of Wis. Stat. § 134.90. Under
that statute, no person may misappropriate a trade secret by:
acquiring the trade secret through improper means; or
disclosing the trade secret after:
using improper means to acquire knowledge of it; or
knowing that he or she acquired it by:
deriving it from another person who used
improper means to acquire it;
acquiring it under circumstances that gave rise
to a duty to maintain secrecy or limit its use;
acquiring it though a person having a duty to
maintain its secrecy or limit its use; or
acquiring it by mistake.
Wis. Stat. § 134.90(2). A “trade secret” is “information, including a formula,
pattern, compilation, program, device, method, technique, or process,”
which: (1) derives economic value from not being generally known to or
ascertainable by other persons; and (2) has been the subject of efforts to
maintain its secrecy. Wis. Stat. § 134.90(a)(1).
Again, Minitube of America has gotten lucky on this claim. Despite the fact
that the defendants moved for summary judgment on the claim, Minitube of
America did not even deign to brief it in response, although it nonetheless asserts
that the defendants’ motion for summary judgment on the claim should be denied.
(Docket #67 at 26). To be sure, that is a very risky strategy that otherwise might
well have resulted in the imposition of sanctions.
Page 56 of 68
The issues with this claim are numerous. To begin, the Court questions
whether the seven pieces of information that the defendants assert to be trade
secrets actually qualify for such treatment. It appears that Minitüb Germany
readily disclosed many of the alleged secrets throughout its relationship with
Minitube of America, calling into question whether that information has been
the subject of efforts to maintain its secrecy. (E.g., PPFF ¶¶ 85, 91–92).
Nonetheless, the defendants argue that the parties protected the information
from a third-party competitor for many years. (Second DPFF ¶ 38). Taking
that to be true, the Court could find that the information was subject to
efforts to maintain its secrecy and, therefore, qualified to be treated as a trade
But that is ultimately irrelevant, because—even if the information was
protected as a trade secret—Minitube of America did not take any action
barred by Wis. Stat. § 134.90(2). To begin, there is no evidence that Minitube
of America acquired the information through improper means. Wis. Stat.
§ 134.90(2)(a). Likewise, despite the defendants’ assertion to the contrary,
which is not based on any cited evidence, there is no evidence that Minitube
of America ever disclosed the information. (See Docket #67 at 21 (asserting
that “MOFA permitted two suitors to examine any part of MOFA’s business
they wanted to examine, including MTI’s trade secrets and confidential
information, despite MTI’s objections,” but failing to provide a citation to the
record to support that assertion.)). Without evidence that Minitube of
America either acquired the information by improper means or disclosed it,
the defendants cannot possibly establish that the requirements of Wis. Stat.
§ 134.90 are satisfied.
Page 57 of 68
However, even if there was evidence that Minitube of America had
disclosed the information, the defendants still could not prevail, because that
disclosure would not have violated Wis. Stat. § 134.90(2)(b). As already
described above, Wis. Stat. § 134.90(2)(b) prohibits disclosure of trade secrets
that the discloser knows: were received from someone who obtained them
by improper means; were acquired under circumstances giving rise to a duty
to maintain secrecy; or were acquired by accident or mistake. There is no
allegation that Minitube of America acquired the information from another
person or by accident or mistake. Accordingly, the only question is whether
Minitube of America disclosed the information despite a duty to maintain its
secrecy. That is not the case. Minitüb Germany never required Minitube of
America to enter into non-disclosure agreements (as it did with employees,
distributors, and Reproduction Provisions) nor did it label documents
containing alleged trade secrets “For In House Use Only” (as it did with
distributors). (See PPFF ¶¶ 90–93 and Resps. (tellingly, the defendants
acknowledge that Minitüb Germany identified many documents for “in
house use” over the course of the parties’ relationship, but does not identify
any of the alleged trade secrets to have been labeled as such)). There is also
no evidence to establish that there was any agreement or contract between
the parties under which the parties agreed not to disclose information
obtained from one another. Accordingly, Minitube of America never had a
duty to maintain any alleged trade secrets and, therefore, could not possibly
have violated Wis. Stat. § 134.90(2)(b).
Having conclusively determined that Minitube of America did not and
could not have misappropriated any of Minitüb Germany’s trade secrets in
violation of Wis. Stat. § 134.90, the Court must also deny the defendants’
Page 58 of 68
Civil Local Rule 7(h) expedited motion for relief under Rule 56(d) of the
Federal Rules of Civil Procedure. In that motion, the defendants argue that
the Court should “defer ruling on [Minitube of America’s motion for
summary judgment on the trade secrets claim], and order further discovery
into the communications between” Minitube of America and the two
companies who considered purchasing it. (Docket #73 at 1). With that
motion, the defendants are attempting to cover their bases: they likely realize
that they have not obtained evidence sufficient to establish that Minitube of
America made any disclosures of trade secrets. However, even if the Court
were inclined to grant the motion, doing so would not be worthwhile
because further discovery on the issue of whether Minitube of America
actually made any disclosures would be futile. That is because, as already
discussed, Minitube of America did not have a duty to maintain any
information it received. So, even if it did make disclosures, those disclosures
would not violate Wis. Stat. § 134.90(2)(b).
For these reasons, the Court is obliged to grant Minitube of America’s
motion for summary judgment on the misappropriation of trade secrets
claim, and likewise to deny the defendants’ motion for relief under Rule
Breach of Contract Claim Against Minitube of
The defendants’ breach of contract claim derives entirely from their
assertions that Minitüb Germany and Minitube of America entered into some
confidentiality agreement. (Docket #16, ¶¶ 61–67). All of the important
allegations on that claim, found in paragraphs 62 through 66 of the parties’
Page 59 of 68
answer and counterclaim, contain information about confidential business
information, trade secrets, and nondisclosure obligations.25
The Court has already determined that Minitube of America did not
have any duty or contract by which to maintain confidentiality of
information provided to it by Minitüb Germany. (See Sec. 2.2.8, supra). Thus,
this claim, by necessity, fails.26 The Court will grant Minitube of America’s
motion for summary judgment in that regard.
2.2.10 Tortious Interference Claim Against Minitube of
The defendants claim that Minitube of America has tortiously
interfered with their contract. There are five elements of a tortious
an actual or prospective contractual relationship;
interference with that contract;
the interference was intentional;
the interference caused damages; and
the interfering party was not justified or privileged to do so.
The defendants disagree. (Resp. to PPFF ¶ 96). They maintain that “the
record has a plethora of evidence to demonstrate that MOFA and MTI had several
contractual agreements.” (Resp. to PPFF ¶ 96). Thus, presumably, the defendants
wish to seek relief for other forms of breaches of contract. However, that contention
is not supported by the language in the answer and counterclaim. Moreover, the
defendants have never moved to amend the answer and counterclaim to seek relief
for any other alleged forms of a breach. Thus, any additional claims are not
properly before the Court and the Court will not address them.
Despite Minitube of America having made clear that it was seeking
summary judgment on this claim (Docket #47 at 17–18), the defendants did not
provide any argument in response. Their table of contents and headings intimate
that they will do so (Docket #67, ii, 21), but then there is no analysis on the issue.
Just as it was when Minitube of America failed to brief the unfair competition
claim, this is a concerning and borderline-sanctionable failure.
Page 60 of 68
Briesemeister v. Lehner, 2006 WI App 140, ¶ 48, 295 Wis. 2d 429, 720 N.W.2d
531; Shank v. William R. Hague, Inc., 192 F.3d 675, 681 (7th Cir. 1999).
The parties agree that the first three elements exist. (Docket #47 at 21).
However, they disagree on the last two. Minitube of America asserts that,
because Minitüb Germany and Reproduction Provisions are still abiding by
the terms of their contract without interruption and have not suffered from
lost sales, they cannot prove that any interference caused damages, so as to
satisfy the fourth element of a tortious interference claim. (Docket #47 at 22).
Likewise, Minitube of America argues that its means of interfering—filing
this lawsuit, sending a cease and desist letter, and issuing statements about
Minitüb Germany’s products—are either justified or privileged by virtue of
their truth. (Docket #47 at 22; #87 at 15).
As to Minitube of America’s first argument, Wisconsin courts do not
require a breach of contract for tortious interference to exist. Sampson
Investments by Sampson v. Jondex Corp., 176 Wis. 2d 55, 72, 499 N.W. 2d 177,
184 (1993) (citing Wisconsin Power & Light Co. v. Gerke, 20 Wis. 2d 181, 121
N.W.2d 912 (1963), which “recognized a cause of action for tortious
interference with contract even though there was no breach of the contract.”).
So, to the extent that Minitube of America argues that the defendants’
tortious interference claim will not lie because the defendants’ contract is still
operational, they are wrong.
Rather, so long as “the value of [the defendants’] bargain” was
impaired as a result of Minitube of America’s interference, the defendants
may maintain their claim in spite of the fact that “there is no failure of
performance.” Wisconsin Power, 20 Wis. 2d at 187 (citing 1 Harper & James,
Law of Torts, sec. 6.9, 499). See also Apple, Inc. v. Motorola Mobility, Inc., No. 11-
Page 61 of 68
CV-178, 2011 WL 7324582, at *16 (W.D. Wis. June 7, 2011); Quad/Graphics, Inc.
v. One2One Comm’s, LLC, No. 09-CV-99, 2011 WL 1135025, at *6 (E.D. Wis.
March 25, 2011); Tele-Port, Inc. v. Ameritech Mobile Comm’s, Inc., 49 F. Supp.
2d 1089, 1093 (E.D. Wis. 1999); Magnum Radio, Inc. v. Brieske, 217 Wis. 2d 130,
577 N.W.2d 377 (Ct. App. 1998). In Wisconsin, “one who, not being
privileged to do so, intentionally and improperly interferes with another’s
performance of a contract,…[by causing] the other’s performance to be more
expensive or burdensome, may be subject to liability for the pecuniary loss
caused thereby. Magnum Radio, 217 Wis. 2d at 139–140.
The Court is satisfied that there is ample evidence to show pecuniary
loss on the defendants’ behalf. If nothing else, as a result of this lawsuit and
the cease and desist letter, they had to repackage and redesign all of the
allegedly-infringing products, certainly causing performance of the contract
to be more expensive. (Second DPFF ¶¶ 40–41). Likewise, Minitube of
America’s representations about its use of specific chemicals in its products
reduced the value of the party’s contract by potentially reducing Minitüb
Germany’s products’ reputations in the marketplace. (Second DPFF ¶ 34–37).
Therefore, the Court is obliged to determine that the defendants’ tortious
interference claim does not fail on the fourth element.
As to the fifth element, it is Minitube of America’s burden to prove
justification or privilege. Select Creations, Inc. v. Paliafito Am., Inc., 911 F. Supp.
1130, 1159 (E.D. Wis. 1995) (citing Chrysler Corp. v. Lakeshore Commercial
Finance Corp., 389 F. Supp. 1216, 1221 (E.D. Wis. 1975), aff'd, 549 F.2d 804 (7th
Cir. 1977); W. Prosser, Law of Torts sec. 123 (3d ed. 1964); Federal Pants, Inc. v.
Stocking, 762 F.2d 561, 569 (7th Cir. 1985)).
Page 62 of 68
Minitube of America carried that burden in part. The Court has held
that Minitube of America’s position on trademark infringement was correct
and has allowed the patent infringement claims to escape summary
judgment. On that basis, the Court is obliged to find that Minitube of
America’s filing of this lawsuit and cease and desist letter were justified.
Accordingly, Minitube of America cannot be held liable for tortious
interference with contract as a result of those activities.
On the other hand, some of Minitube of America’s representations to
third parties appear to be incorrect. For example, by informing third party
customers that it had developed a chemical that it used exclusively, making
its products superior (Second DPFF ¶¶ 34–37), Minitube of America seems
to have provided false information: it did not develop the chemical or use the
chemical exclusively, and its bags likely were not superior to Minitüb
Germany’s. At the very least, Minitube of America has not carried its burden
on this point to show that its statements were true, such that it would be
privileged to have made them.
For these reasons, the Court must grant Minitube of America’s motion
for summary judgment on the defendants’ tortious interference claim insofar
as the defendants seek to recover for Minitube of America’s having filed this
lawsuit or sent the defendants the cease and desist letter. However, the Court
must deny Minitube of America’s motion for summary judgment on the
tortious interference claim insofar as that claim is based upon Minitube of
America’s allegedly-false communications to third parties. At trial, Minitube
of America may attempt to establish the truth of its statements; meanwhile,
if it cannot do so, then the defendants will have the burden to establish their
Page 63 of 68
To wrap up this extremely complicated order, the Court will
summarize its holdings. It has granted summary judgment in the following
In favor of the defendants on their argument that Minitube of
America lacks standing to pursue its claims for injunctive
relief; accordingly, Minitube of America cannot proceed on its
claims to the extent it seeks injunctive relief. (Sec. 126.96.36.199, supra).
In favor of Minitube of America on its trademark infringement
claims against the defendants; the Court having resolved the
substance of this claim in Minitube of America’s favor, the
issue of damages on this claim remains open. (Sec. 188.8.131.52.2,
In favor of Minitube of America on the defendants’ trademark
infringement claims; accordingly, the Court must dismiss this
claim. (Sec. 184.108.40.206, supra).
In favor of the defendants on Minitube of America’s false
advertising claim; accordingly, the Court must dismiss this
claim. (Sec. 2.2.5, supra).
In favor of the defendants on Minitube of America’s fraudulent
representations claim; accordingly, the Court must dismiss this
claim. (Sec. 2.2.6, supra).
In favor of Minitube of America on its common law unfair
competition claim against the defendants; while Minitube of
America did not move for summary judgment on that claim,
the outcome is compelled by the Court’s analysis of Minitube
of America’s trademark infringement claims. Likewise, the
issue of damages on this claim remains a live one for the jury.
(Sec. 2.2.7, supra).
In favor of Minitube of America on the defendants’
misappropriation of trade secrets claim; accordingly, the Court
must dismiss this claim. (Sec. 2.2.8, supra).
Page 64 of 68
In favor of Minitube of America on the defendants’ breach of
contract claim; accordingly, the Court must dismiss this claim.
(Sec. 2.2.9, supra).
In favor of Minitube of America on the defendants’ tortious
interference claim, insofar as that claim is based upon Minitube
of America’s having filed this lawsuit or sent a cease and desist
letter; accordingly, the Court must dismiss this claim to the
extent described. (Sec. 2.2.10, supra).
It has denied summary judgment in the following respects:
Against the defendants on their argument that Minitube of
America lacks standing to pursue its claims for damages;
accordingly, Minitube of America may proceed on its claims to
the extent it seeks damages and its claims have not otherwise
been dismissed as describe above. (Sec. 220.127.116.11, supra).
Against both parties on their arguments regarding patent
infringement (Sec. 2.2.2, supra); while the Court determined
that Minitüb Germany does not have a license to sell the ‘503
patent in the United States (Sec. 18.104.22.168, supra), it found that
issues of fact remained as to whether there was an offer for sale
(Sec. 22.214.171.124.1, supra) or importation to the United States (Sec.
126.96.36.199.2, supra). Those issues must be presented to the jury,
because the doctrine of de minimis noncurat lex does not apply
to them. (Sec. 188.8.131.52, supra).
Against the defendants on Minitube of America’s false patent
marking claim; Minitube of America stated this claim with the
requisite particularity and questions of fact regarding its intent
remain to be determined by the jury. (Sec. 2.2.3, supra).
Against the defendants on Minitube of America’s trademark
infringement claim (Sec. 184.108.40.206.1); as already noted, the Court
must grant Minitube of America’s motion for summary
judgment in its favor on this claim (Sec. 220.127.116.11.2, supra), thus
leaving open only the issue of the amount of Minitube of
America’s damages on this claim.
Against Minitube of America on the defendants’ tortious
interference claim, insofar as that claim is based upon Minitube
of America’s allegedly fraudulent statements to third parties;
Page 65 of 68
the falsity of those statements and damages (if the defendants
prevail on this claim) remain live issues of fact for the jury.
(Sec. 2.2.10, supra).
The Court must also address the outstanding motions. As discussed
above in Section 2.2.8, supra, it will deny the defendants’ motion for relief
under Rule 56(d) (Docket #73). The defendants also filed a motion to strike
portions of Ludwig Simmet’s declaration. (Docket #92; #97). The Court did
not rely heavily on the challenged declaration and, where it did, it provided
a rationale for its reliance thereon (e.g., Sec. 18.104.22.168.1 & n.22, supra). The Court
will, therefore, deny the defendants’ motion to strike (Docket #92) as moot.
The Court has also reviewed the substantial amounts of materials
submitted by the parties under seal, and which the parties have moved to
seal. (Docket #31, #43, #44, #46, #66, #75, #86, #93, #95). All of the materials in
question contain very sensitive business-related materials that could damage
the parties if released publicly, and the Court accordingly finds good cause
to seal the materials. The Court will, therefore, grant the parties’ motions to
As for this order, the Court has endeavored to avoid discussing
specific information that should remain sealed, and the Court finds no reason
to suggest that this order or any portion thereof be filed under seal. At the
same time, the Court reminds the parties that the presumption is that
litigation must occur in the public eye. American Telephone & Telegraph Co. v.
Grady, 594 F.2d 594, 596 (7th Cir. 1979); Fed. R. Civ. P. 26(c); Citizens First
Nat’l Bank of Princeton v. Cincinnati Ins. Co., 178 F.3d 943, 945–46 (7th Cir.
1999); Hicklin Eng’r, L.C. v. Bartell, 439 F.3d 346, 348 (7th Cir. 2006).
Finally, the Court must address the state of preparation in this case.
Quite clearly, the parties both have thrown practically every conceivable
Page 66 of 68
claim “at the wall,” hoping that something would stick. In doing so, they
often ignored significant shortcomings with their claims and occasionally
failed to even address the claims in their respective filings. They instead leave
it to the Court to sort everything out for them. Make no mistake, that will not
work at trial. At that stage, the parties will have to prepare and present their
own cases. The Court makes this observation because, if the state of
preparations for trial at all reflects the parties’ efforts at the summary
judgment stage of the proceedings, the Court has serious concerns along with
significant reservations as to how well the parties’ respective claims will be
The Court does not relay these concerns in order to denigrate the
parties’ efforts. Instead, the Court simply wishes to ensure that the parties are
fully prepared to present their respective cases at trial. They might begin by
reading, rereading, and studying with care each of the protocols addressed
in the Court’s Trial Scheduling Order (Docket #13), and work closely with
one another to identify any issues and facts that they can resolve prior to trial
through stipulation or settlement. If they do not do so, they will find
themselves challenged with an extremely bumpy ride when the day of trial
IT IS ORDERED that the Minitube of America’s motion for summary
judgment (Docket #32) be and the same is hereby GRANTED in part and
DENIED in part, as more fully described above;
IT IS FURTHER ORDERED that the defendants’ motion for
summary judgment (Docket #45) be and the same is hereby GRANTED in
part and DENIED in part, as more fully described above;
Page 67 of 68
IT IS FURTHER ORDERED that the defendants’ motion for relief
pursuant to Rule 56(d) (Docket #73) be and the same is hereby DENIED;
IT IS FURTHER ORDERED that the defendants’ motion to strike the
deposition of Ludwig Simmet (Docket #92) be and the same is hereby
DENIED as moot; and
IT IS FURTHER ORDERED that the parties’ motions to seal (Docket
#31, #43, #44, #46, #66, #75, #86, #93, #95) be and the same are hereby
Dated at Milwaukee, Wisconsin, this 1st day of May, 2014.
BY THE COURT:
U.S. District Judge
Page 68 of 68
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?