Auvesy GmbH & Co KG v. Rockwell Automation Inc et al

Filing 34

ORDER signed by Judge Rudolph T. Randa on 10/13/2015. 25 Defendants' MOTION for Reconsideration DENIED; 31 Plaintiff's MOTION for Leave to File Sur-Reply GRANTED. Telephonic Scheduling Conference set for 11/18/2015 at 10:30 AM (Central Time) before Judge Rudolph T. Randa, the Court will initiate the call. (cc: all counsel)(cb)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
AUVESY GmbH & Co. KG,
Plaintiff,
-vs-

Case No. 14-C-1258

ROCKWELL AUTOMATION, Inc. and
ROCKWELL TECHNOLOGIES, Inc.,
Defendants.
DECISION AND ORDER
This case involves a dispute over patent ownership. On June 30, the
Court denied the defendants’ motion for judgment on the pleadings. The
Court held, as relevant here, that certain claims brought by the plaintiff, a
German corporation called Auvesy, were not time-barred because the
defendants (collectively Rockwell) did not assert actual ownership over the
patents until October 11, 2011. Rockwell moves to reconsider.
Rockwell argues, as before, that it asserted ownership over the
invention much earlier than October of 2011. For example, on June 2,
2006, Rockwell filed a provisional patent application that named itself as
the assignee of the invention. Rockwell continued to refer to itself as the
assignee in subsequent correspondence with the PTO. ECF No. 15-1, Ex. A;
ECF No. 30, Ex. A-D. However, that correspondence also made clear that

the inventors were refusing to assign the invention. Most importantly,
Auvesy’s claims are not premised upon the provisional application. Instead,
they arise from Rockwell’s October 11, 2011 assertion of ownership in an
Issue Fee Transmittal form that resulted in the patent being issued in
Rockwell’s name as the assignee on the face of the patent. Therefore, the
claims are not time-barred.
Auvesy’s motion for leave to file a sur-reply [ECF No. 31] is
GRANTED. Rockwell’s motion for reconsideration [ECF No. 25] is
DENIED. This matter is set for a Rule 16(b) telephonic scheduling
conference on November 18, 2015 at 10:30 a.m. (CST). The parties
should refer to the Court’s previous order [ECF No. 24] for details.
Dated at Milwaukee, Wisconsin, this 13th day of October, 2015.
SO ORDERED:
__________________________
HON. RUDOLPH T. RANDA
U.S. District Judge

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