United States District Court, W.D. Arkansas, Fort Smith Division
OPINION AND ORDER
HOLMES, III CHIEF U.S. DISTRICT JUDGE
the Court is a motion (Doc. 84) for partial summary judgment
filed by Defendant Morris & Associates, Inc.
(“Morris”). Morris has also filed a brief in
support (Doc. 85) and a statement of facts (Doc. 86).
Plaintiff John Bean Technologies Corporation
(“JBT”) has filed a response in opposition (Doc.
95) and responsive statement of facts (Doc. 96). Morris has
filed a reply (Doc. 99). This motion requests partial summary
judgment on JBT's “false marking and false
advertising claims associated with Morris's advertising
of its IntraGrill auger chiller as patented under United
States Patent No. 6, 308, 529 (‘the ‘529
patent').” (Doc. 84, p. 1).
before the Court is a separate motion (Doc. 91) for partial
summary judgment, a brief in support (Doc. 92) and a
statement of facts (Doc. 93) filed by Morris. JBT has filed a
response in opposition (Doc. 101) and responsive statement of
facts (Doc. 102). Morris has filed a reply (Doc. 105), and
JBT has filed a surreply (Doc. 109) with leave of Court. This
motion requests partial summary judgment on JBT's
“false advertising claims associated with Morris's
IntraGrill auger chiller webpage.” (Doc. 91, p. 1).
before the Court is JBT's motion (Doc. 78) for
reconsideration of a protective order (Doc. 77) entered by
the Court. JBT has filed a brief in support (Doc. 80) and
Morris has filed a response (Doc. 88).
JBT cannot show a genuine dispute of material fact with
respect to the issue of causation and injury, the motions for
partial summary judgment will be granted. Because JBT cannot
show that the discovery it seeks is relevant or proportional,
the motion for reconsideration will be denied.
action was filed in 2015 by Cooling & Applied Technology,
Inc. (“CAT”). CAT asserted Patent Act false marking
claims pursuant to 35 U.S.C. § 292(b), Lanham Act false
advertising claims pursuant to 15 U.S.C. § 1125, and
various North Carolina and Arkansas State law claims against
Morris. CAT's claims involved Morris's IntraGrill
auger chiller, marked as patented under the ‘529
patent, and Morris's COPE product, marked as patented
under United States Patent No. 7, 470, 173 (“the
‘173 patent”) and United States Patent No. 7,
588, 483 (“the ‘489 patent”). Morris filed
a motion to dismiss the false marking claims and any
associated Lanham Act and state law claims. CAT's
business was acquired by JBT, and CAT assigned its claims in
this lawsuit to JBT without opposition from Morris.
Court substituted JBT for CAT and denied the motion to
dismiss. (Doc. 42). In its opinion and order denying that
motion to dismiss, the Court addressed the issue of causation
and injury. With respect to the false marking claims related
to the ‘529 patent, the Court explained that JBT would
be required to show a competitive injury caused by Morris to
succeed on its false marking claim, and noted that JBT
alleged that “[u]pon information and belief . . .
customers have been reluctant to purchase and, in some
instances, have declined to purchase, CAT's chillers
or certain parts of CAT's chillers as a result of
Morris's false marketing.” (Doc. 42, p. 9 (quoting
Doc. 1, ¶ 102)).
entry of this order, the parties filed a second joint Rule
26(f) report. (Doc. 45). JBT proposed that the parties engage
in full discovery on all claims and defenses. Morris proposed
that discovery be bifurcated, and first be limited to
discovery regarding intent to deceive and Morris's
advice-of-counsel defense. The Court entered an interim
scheduling order (Doc. 46) declining to limit discovery as
Morris proposed, thereby allowing JBT to seek discovery
regarding all claims and defenses. The Court also set a claim
construction hearing, which was held on July 19, 2017. JBT
then amended its complaint (Doc. 64), primarily adding
additional factual allegations in support of its willfulness
claims, and maintaining its nonspecific allegations that it
had been or was likely to be injured by Morris's false
marking and false advertising. An unredacted copy (Doc. 65)
of the amended complaint was filed under seal.
Morris moved for a protective order (Doc. 69). Morris argued
that despite ample opportunity in the course of discovery,
JBT had not met its obligation to articulate or provide
evidence of a single injury caused by Morris's alleged
false marking and false advertising of the IntraGrill auger
chiller. Referencing the proportionality principle in Federal
Rule of Civil Procedure 26, Morris requested that the Court
protect Morris from JBT's requests for detailed
disclosure of Morris's sales and financial information
related to the IntraGrill auger chiller until JBT showed
evidence that it had suffered an injury. JBT's response
argued that it had been injured by Morris's false marking
and false advertising, but the responses to Morris's
discovery requests and the evidence cited in support of that
response indicated otherwise. JBT's failure to provide
evidence of injury not only led the Court to determine that
JBT's discovery requests were disproportionate to the
needs of the lawsuit, but that summary judgment against JBT
may be appropriate at the very least on claims related to the
IntraGrill auger chiller marked with the ‘529 patent.
The Court granted the motion for protective order, and
further ordered Morris to file a motion for partial summary
parties then filed the motions under consideration.
Standard of Review
“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). The moving party bears the
burden of showing the absence of a genuine dispute of
material fact and that it is entitled to judgment as a matter
of law. Fed.R.Civ.P. 56(c). It may meet this burden by citing
to affidavits, pleadings, depositions, answers to
interrogatories, and admissions on file. Celotex Corp. v.
Catrett, 477 U.S. 317, 324 (1986). When the moving party
has met its burden, the nonmoving party must “come
forward with ‘specific facts showing that there is a
genuine issue for trial.'” Matsushita Elec.
Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587
(1986) (quoting old Fed.R.Civ.P. 56(c)). “The nonmoving
party must do more than rely on allegations or denials in the
pleadings, and the court should grant summary judgment if any
essential element of the prima facie case is not supported by
specific facts sufficient to raise a genuine issue for
trial.” Register v. Honeywell Fed. Mfg. &
Techs., LLC, 397 F.3d 1130, 1136 (8th Cir. 2005) (citing
Celotex Corp., 477 U.S. at 324).
analyzing whether there is a genuine dispute of material
fact, the Court draws all reasonable inferences in the
nonmoving party's favor. Matsushita Elec. Indus.
Co., 475 U.S. at 587-88. “[T]he non-moving party
must be able to show sufficient probative evidence that would
permit a finding in his favor on more than mere speculation,
conjecture, or fantasy.” Binkley v. Entergy
Operations, Inc., 602 F.3d 928, 931 (8th Cir. 2010).
“A party may not rely solely on inadmissible hearsay in
opposing a motion for summary judgment, but instead must show
that admissible evidence will be available at trial to
establish a genuine issue of material fact.” Fin.
Timing Publ'ns, Inc. v. Compugraphic Corp., 893 F.2d
936, 942 (8th Cir. 1990). “[S]ummary judgment is
appropriate when there is ‘adequate time' for
discovery and not solely when discovery is complete. The
district court has discretion to determine when there has
been adequate time for discovery . . . .” Nat'l
Bank of Commerce of El Dorado, Ark. v. Dow Chemical Co.,
165 F.3d 602, 606 (8th Cir. 1999) (citation omitted). A party
who seeks additional discovery in response to a motion for
summary judgment must do more than speculate that additional
discovery would be useful-it must show, without conclusory
statements that some evidence might possibly be found, how
additional discovery would alter the evidence before the
court. Nat'l Bank of Commerce of El Dorado,
Ark., 165 F.3d at 606 (8th Cir. 1999).
Controlling Substantive Federal Law
general matter, the Court applies Federal Circuit precedent
to patent law issues, but otherwise applies the precedent of
the Eighth Circuit. Midwest Indus., Inc. v. Karavan
Trailers, Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en
banc in relevant part), abrogation on other grounds
recognized by Amgen Inc. v. Sandoz Inc., 877 F.3d 1315,
1325-26 (Fed. Cir. 2017). The Court applies Federal Circuit
precedent to JBT's Patent Act false marking claims.
Panduit Corp. v. All States Plastic Mfg. Co., Inc.,
744 F.2d 1564, 1573 (Fed. Cir. 1984), overruled on other
grounds by Richardson-Merrell, Inc. v. Koller, 472 U.S.
424 (1985). The Court applies Eighth Circuit precedent to
JBT's Lanham Act false advertising claims. Syngenta
Seeds, Inc. v. Delta Cotton Coop, Inc., 457 F.3d 1269,
1273 (Fed. Cir. 2006). The Court applies state law to those
claims over which it is exercising supplemental jurisdiction
under 28 U.S.C. § 1367. Felder v. Casey, 487
U.S. 131, 151 (1988) (“[W]hen a federal court exercises
diversity or pendent jurisdiction over state-law claims,
‘the outcome of the litigation in the federal court
should be substantially the same, so far as legal rules
determine the outcome of a litigation, as it would be if
tried in a State court.'” (quoting Guar. Tr.
Co. v. York, 326 U.S. 99, 109 (1945))).
may obtain discovery regarding any nonprivileged matter that
is relevant to any party's claim or defense and
proportional to the needs of the case.” Fed.R.Civ.P.
26(b)(1). For good cause, the Court may enter a protective
order to protect a party from undue burden. Fed.R.Civ.P.
Morris are manufacturers and distributors of auger chillers
to poultry processors in the United States. JBT and Morris
sell other poultry processing equipment, as well. For
purposes of these motions, it is agreed that JBT and Morris
are the only two distributors of auger chillers in the
relevant market. An auger chiller is a piece of equipment in
a processing line which receives chicken carcasses in the
middle stages of the butchering process and cools them to
prevent contamination. Auger chillers vary in the details of
their design, but the general form of an auger chiller is a
long, open-topped tank mostly encompassing an auger running
the length of the tank. Cold water is run in a current from
the far end of the tank to the receiving end to cool the
chickens, and the auger slowly rotates on a shaft, driving
the chickens against this current to the far end of the tank.
Unless another opening in the auger blades, or flights, is
present, the water in the tank flows through the small space
between the edge of the auger blades and the interior wall of
the tank. The flow of water in the center of the tank near
the auger shaft is generally slowed by the auger blades, and
tends to heat more quickly and cool less effectively than the
flowing water at the edge of the blades. When they reach the
end of the tank, the chilled chickens are then received by
the next stage of the processing line.
chillers are expensive, heavy-duty pieces of equipment that
are manufactured to last for many years. Consequently, sales
to customers-various processors around the country-are
relatively few, highly competitive, and worth a substantial
amount of money. Salespeople for JBT and Morris attempt to
keep a close relationship with their customers and potential
customers to maintain a good reputation in the market and
increase the chance of future sales. JBT and Morris also
maintain websites, publish brochures for distribution to
customers, and attend trade shows in order to improve their
reputations with customers and make additional sales.
sells an auger chiller called IntraGrill. In an effort to
increase the flow of water throughout the auger chiller tank,
Morris has manufactured vertical openings in the auger blades
of the IntraGrill auger chiller. These openings run from the
shaft to the edge of the blade. Morris calls these openings
“water passages.” Morris has marked the IntraGrill
auger chiller with the ‘529 patent. Morris advertises
its auger chiller as patented on its website, in brochures,
on signs at trade shows, and in communication with customers
and potential customers. JBT believes Morris has falsely
marked its IntraGrill auger chiller as patented and is
falsely advertising its IntraGrill auger chiller as patented.
also sells an auger chiller, called FATCAT. FATCAT was
manufactured and sold by CAT prior to CAT's purchase by
JBT. In 2013, CAT began including openings for water in the
blades of its own auger chillers. JBT calls these openings
“flow reliefs.” JBT's flow reliefs do not run
from the shaft to the edge of the blade, but are located only
near the shaft. ...