United States District Court, W.D. Arkansas, Fort Smith Division
OPINION AND ORDER
HOLMES, III U.S. DISTRICT JUDGE.
the Court is a motion (Doc. 136) for summary judgment filed
by Defendant Morris & Associates, Inc.
(“Morris”). Morris filed a redacted brief (Doc.
137) and statement of facts (Doc. 138) in support. Morris
also filed an unredacted brief in support (Doc. 140-1),
unredacted statement of facts (Doc. 140-2), and unredacted
exhibits (Docs. 140-3, 140-4) to the motion. Plaintiff John
Bean Technologies Corporation (“JBT”) filed a
redacted response brief (Doc. 144) and statement of facts
(Doc. 145) in opposition. JBT also filed an unredacted brief
(Doc. 146) and statement of facts (Doc. 147). Morris filed a
reply (Doc. 151), and JBT filed a surreply (Doc. 154) with
leave of Court. Morris's motion requests judgment be
entered against JBT on JBT's remaining federal law claims
alleging false marking and false advertising of Morris's
COPE products as patented under United States Patent Nos. 7,
470, 173 (“the ‘173 patent”) and 7, 588,
489 (“the ‘489 patent”) and North Carolina
and Arkansas state law claims.
no reasonable jury could find that Morris's COPE products
are unpatented, the motion will be granted.
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 United
States Patent No. 6, 308, 529 (“the ‘529
patent”), and Morris's COPE products, marked as
patented under the ‘173 and ‘489 patents. 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. The Court
substituted JBT for CAT and denied the motion to dismiss.
19, 2017, the Court held a claim construction hearing. 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. On June 19,
2018, because of JBT's failure to show proximately-caused
injury or reliance, the Court granted partial summary
judgment (Doc. 110) to Morris on JBT's federal false
marking and false advertising claims, North Carolina Unfair
and Deceptive Practices Act claims, Arkansas Deceptive Trade
Practices Act claims, and Arkansas common law unfair
competition claims related to Morris's IntraGrill auger
chiller and the ‘529 patent.
December 11, 2018, the Court entered a claim construction
opinion and order. (Doc. 133). Thereafter, Morris filed its
motion for summary judgment on the remaining claims.
Standard of Review
viewing the record in the light most favorable to the
nonmoving party and granting all reasonable factual
inferences in the nonmovant's favor, a motion for summary
judgment must be granted “if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to summary judgment as a matter of
law.” Fed.R.Civ.P. 56(a); Haggenmiller v.
ABM Parking Serv., Inc., 837 F.3d 879, 884 (8th Cir.
2016). Facts are material when they can “affect the
outcome of the suit under the governing law.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). Disputes are genuine when “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party.” Id. “While the burden
of demonstrating the absence of any genuine issue of material
fact rests on the movant, a nonmovant may not rest upon mere
denials or allegations, but must instead set forth specific
facts sufficient to raise a genuine issue for trial.”
Haggenmiller, 837 F.3d at 884 (quotations omitted).
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. v.
Dow Chem. Co., 165 F.3d 602, 606 (8th Cir. 1999).
Controlling Substantive Federal Law
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 Co-op, Inc., 457 F.3d 1269, 1273 (Fed.
Cir. 2006). The Court applies the relevant 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))).
Morris are manufacturers and distributors of poultry
processing equipment purchased and used by poultry processors
in the United States. Among the products Morris manufactures
and distributes to poultry processors are tanks in which
poultry processors can submerge their product in fluid for a
relatively short period for decontamination. Morris brands
these decontamination tanks as COPE products and advertises
three types of those as patented: Pre-COPE, COPE-FC, and
Parts COPE. The Pre-COPE tanks typically treat poultry
product prior to that product being chilled in a
chiller. The COPE-FC tanks typically treat poultry
product after that product has been chilled in a chiller. The
Parts COPE tanks typically treat poultry product that has
been cut into discrete chicken parts familiar to poultry
consumers-breasts, thighs, wings, strips, etc. Morris is the
owner of the ‘173 patent and the ‘479 patent,
which disclose “post chill decontamination
tanks.” Morris marks its COPE tanks as protected by
these patents, and advertises them for sale as patented.
processing, poultry product enters a COPE tank through an
inlet chute, is maneuvered through the tank by a paddle
wheel, and exits the tank through an exit opening. On many
COPE products, the inlet chute and exit opening are located
on opposite sides of the upper half of the tank. While in the
tank, poultry product is submerged in a fluid, which can be
supplied to the tank through an inlet port.
brings Patent Act false marking claims under 35 U.S.C. §
292 and Lanham Act false advertising claims under 15 U.S.C.
§ 1125. JBT alleges that Morris's ‘173 and
‘489 patents do not read on Morris's COPE products
and so those products are falsely marked and falsely
advertised as patented. JBT also brings North Carolina Unfair
and Deceptive Practices Act claims pursuant to N.C. Gen.
Stat. Ann. § 75-16, Arkansas Deceptive Trade Practices
Act claims pursuant to Ark. Code Ann. § 4-88-113(f)(2),
and Arkansas ...