Are the Pleading Standards for Method Claims More Rigorous in the Context of Rule 11?

No.

Micro Processing Technology, Inc. sent a letter to Plasma-Therm alleging that Plasma-Therm was infringing MPT's patent.  Plasma-Therm filed a declaratory judgment action seeking a declaration that it did not infringe.  Six months into the litigation, MPT served preliminary infringement contentions, which were based "[u]pon the information currently available to MPT and its belief."  MPT twice amended its infringement contentions. 

Plasma-Therm then moved to strike MPT's infringement contentions, arguing MPT lacked diligence in their preparation.  The Court denied the motion to strike, noting that while the contentions were "sparce," they gave notice of MPT's preliminary theories.  The Court also noted that the parties would have an opportunity to serve final contentions later in the litigation.

A month later, MPT filed its counterclaims asserting patent infringement (and other claims).    Plasma-Therm moved to dismiss those counterclaims.  Two weeks later (before MPT responded to the motion to dismiss), Plasma-Therm sought sanctions pursuant to Rule 11 for MPT's failure to conduct a proper pre-suit inquiry before asserting its patent infringement counterclaims.

The next day, the Court construed a number of terms the parties has disputed, adopting Plasma-Therm's constructions.  Shortly thereafter, MPT voluntarily dismissed its counterclaims and the case settled in full, but for resolution of the sanctions motion.

MPT offered four defenses to the sanction motion:

1. its counterclaims were compulsory, so it had to file them at an early stage of the litigation;
2. the sanctions motion is better resolved as a motion to dismiss;
3. the standard for pre-suit investigations is different for method patent claims than product claims; and
4. its pre-suit investigation was reasonable in light of its "good faith constructions.

As to the counterclaim being compulsory:

the fact that a counterclaim may be compulsory does not excuse a litigant or counsel from compliance with Rule 11.  See e.g. View Eng'g, Inc. [v. Robotic Vision Sys], 208 F.3d 981, 986 (Fed. Cir. 2000) (affirming Rule 11 sanctions on defendant who filed counterclaims of patent infringement without reasonable inquiry following plaintiff's declaratory action seeking to have defendant's patent declared invalid, or in the alternative, a finding of no infringement).

As to the sanctions motion being better resolved as a motion to dismiss:

The Court disagrees.  With respect to patent infringement claims, Rule 11 asks whether there was, at a minimum, a reasonable basis for a finding of infringement.  Thought not the only factor, the content of the pleadings is relevant to that analysis.

As to the legal standard for sanctions in connection with method claims:

None of the cases MPT cites support its theory that a different pre-filing standard exists with respect to patent infringement claims involving a method. Q-Pharma, Inc. [v. Andrew Jergens Co.], 360 F.3d 1295, 1300-01 (Fed. Cir. 2004) (analyzing a patent “directed to a method” and stating that “[i]n the context of patent infringement actions, we have interpreted Rule 11 to require, at a minimum, that an attorney interpret the asserted patent claims and compare the accused device with those claims before filing a claim alleging infringement”); PPS Data, LLC [v. Athenahealth, Inc], 2012 WL 601208, at *1 (describing pre-filing analysis). Other case law on the topic of Rule 11 sanctions does not support MPT’s assertion, either. See, e.g., Judin v. U.S., 110 F.3d 780, 784 (Fed. Cir. 1997) (analyzing whether claimant and attorney adequately compared accused devices with patent claims involving a method). Therefore, the Court finds no basis to adopt MPT’s contention that it did not need to conduct a factual inquiry prior to filing suit.

As to the reasonableness of its pre-suit analysis:

Here, MPT has not shown why, prior to filing suit, MPT believed its claim of infringement was meritorious. MPT has not compared any product, process, or method utilized by Plasma Therm to the patents-in-suit. Nor has MPT even identified any such product, process, or method utilized by Plasma-Therm against which the patents-in-suit could have been compared. See Judin, 110 F.3d at 784 (Viewing an alleged infringing device “may have been sufficient to put Judin on inquiry about whether the Government was using a device that infringed his patent. But Rule 11 requires more. It requires that the inquiry be undertaken before the suit is filed, not after.”). 

The only explanation MPT gives as to why it believed it had a reasonable chance of proving infringement is provided in a footnote, in which MPT states that “if Plasma-Therm practiced the disputed claims in the way Plasma-Therm implies it did in its claims constructions it would infringe the claims as construed by MPT.” Doc. 111 at p. 2, n. 3. But Plasma-Therm’s claim construction brief does not explain its own products, processes, or methods. Rather, PlasmaTherm’s claim construction brief describes only the patents-in-suit, including the specification and prosecution, to explain why the disputed claim terms should be construed as Plasma-Therm suggests. To the extent MPT draws inferences about Plasma-Therm’s product, processes, or method from Plasma-Therm’s advocacy of certain claim constructions, this is not explained. Nor would such inferences have necessarily been reasonable and sufficient for MPT to meet its burden under Rule 11 given the Court’s rejection of MPT’s claim constructions. See Source Vagabond Sys. Ltd. [v. Hydrapack, Inc.], 753 F.3d 1291, 1302 (Fed. Cir. 2014).

Summarizing its analysis, the Court noted that "neither MPT nor its counsel even suggest that they attempted to apply the claims of the patents-in-suit to any accused device, method, process, or product of Plasma-Therm.  The failure of MPT and its attorneys to make a reasonable inquiry before filing the frivolous infringement counterclaims warrants Rule 11 sanctions."

Motion for sanctions granted.
Plasma-Therm, LLC v. Micro Processing Technology, Inc., Case No. 8:15-CV-2785-T-36TBM (M.D. Fla. Oct. 23, 2018) (J. Honeywell)

Can The Manager of a Florida LLC Represent the Corporation in Litigation?

If she or he is not a lawyer, no.

David Boggs, LLC and Mac Mar, LLC sued Matthew Soltis and his company My Affordable Roof, LLC for trademark infringement concerning the mark "MY AFFORDABLE ROOF."  Soltis appears to have opted to defend himself.  He has submitted a number of filings to the Court captioned as requests for extension of time, motions to dismiss for lack of subject matter jurisdiction, and answers.  He has submitted these filings both on behalf of himself, and on behalf of his corporation.

On plaintiffs' motion, the Court struck the first such filing on behalf of the corporation:

Soltis is not an attorney so cannot represent this entity under Local Rule 2.03(e). (Doc. 16, pp. 1–3.) See Local Rule 2.03(e) (“A corporation may appear and be heard only through counsel admitted to practice in this Court pursuant to Rule 2.01 or Rule 2.02.”); see also Energy Lighting Mgmt., LLC v. Kinder, 363 F. Supp. 2d 1331, 1332 (M.D. Fla. 2005) (applying Local Rule 2.03(e) to limited liability companies).

Undeterred, Soltis tried again, moving for an extension of time on behalf of himself and his corporation to respond to the complaint.  The Court again reminded Soltis that a corporation must be represented by counsel:

Defendant Soltis has again filed a Motion on behalf of My Affordable Roof, LLC in violation of the local rules. The Motion filed on behalf of Defendant, My Affordable Roof, LLC is unauthorized. 

Soltis then filed a motion to dismiss the complaint as to him, and tried filing an answer on behalf of the Corporation.  The Court struck the corporation's answer, and denied Soltis' motion:

On review, the Court finds the Motion is due to be denied. First, the Motion is untimely. Indeed, Soltis’ approach to this case reveals a pattern of disregarding court orders, despite repeated extensions and opportunities for compliance. This latest Motion appears to be another delay tactic, as the Court flatly denied Soltis leave to file it. (See Doc. 22.) Moreover, Soltis’ argument that the Court lacks subject matter jurisdiction here is meritless. Plaintiffs’ Complaint alleges violations of the Lanham Act based, in part, on Defendants’ engagement in interstate commerce. (E.g., Doc. 1, ¶ 20.) Accepting these allegations as true, subject matter jurisdiction exists here. See Stalley ex rel. U.S. v. Orlando Reg’l Healthcare Sys. Inc., 524 F.3d 1229, 1232–33 (11th Cir. 2008) (announcing standard of review for facial subject matter jurisdiction attacks where the defendant does not use material extrinsic to the pleadings). 

Motion to dismiss, granted.  Motion to strike corporation's answer, granted.  Amended motion for default as to corporation, granted as well.

[Practice pointer -- a corporation may not represent itself in the Middle District of Florida; it must engage counsel.]

David Boggs, LLC v. Soltis, Case No. 6:18-CV-687-ORL-37GJK (M.D. Fla. Oct. 1, 2018) (J. Dalton, Jr.)

Does The Labor Day Holiday's Mattress Sale Weekend Warrant a Temporary Restraining Order?

No.

The owner of the TEMPUR-PEDIC bedding brand ("Plaintiff") has sued a number of defendants, including a former retailer as well as the owner of the THERAPEDIC bedding brand.  Through that lawsuit, Plaintiff seeks to enjoin sales of the THERAPEDIC bedding.

To that end, on August 28, 2018, the Tuesday before the labor day holiday, Plaintiff filed suit.   Along with its complaint, Plaintiff also filed a motion for a temporary restraining order, as well as a motion for a preliminary injunction.  The next day, the Court denied the motion for TRO for failure to comply with Fed. R. Civ. P. 65(b)(1)(B)'s obligation that the filing lawyer certify what efforts she has made to give notice to the defending party, and why notice should not be required.  Notably, the Court also referred the motion for preliminary injunction the magistrate judge to conduct an evidentiary hearing and issue a report and recommendation.

After its motion was denied, Plaintiff's general counsel emailed the retailer defendant's general counsel demanding defendant cease sales, and provided a copy of the motion for TRO as well as the Court's order denying it.  Plaintiff's letter gave defendant one day to comply.  Defendant did not respond.

Plaintiff next renewed its motion for TRO on the evening of August 30, 2018 (the Thursday before the labor day holiday).  Plaintiff included a copy of its letter to the defendant in an attempt to satisfy Fed. R. Civ. P. 65(b)(1)(B).  The next day, Friday, around 11:50am Defendant's counsel contacted the Court and indicated that it wanted to oppose Plaintiff's motion for TRO.  The Court gave defendant until 3pm that day to file its response, which defendant did.

Plaintiff's argument for a TRO was based, in part, on the labor day sales weekend being "one of the bedding industry's biggest sales weekends."  Permitting defendant to sell the allegedly infringing products through this weekend would result in "significant irreparable harm to [Plaintiff's] brand and goodwill."  In response, defendant explained that its limited sales in a single test market, as well as its long standing trademark rights -- predating Plaintiff's trademark rights -- cautioned against the extraordinary remedy of an ex parte temporary restraining order.   The Court agreed with defendant:

The Court is mindful that “[a]n ex parte temporary restraining order is an extreme remedy to be used only with the utmost caution.” Levine v. Comcoa Ltd., 70 F.3d 1191, 1194 (11th Cir. 1995). Given the contested nature of the allegations underpinning Plaintiffs’ argument for a temporary restraining order, as well as Mattress Firm’s request that it be given an opportunity to respond fully before any injunctive relief is granted, the Court denies the Renewed Motion for Temporary Restraining Order. The Court finds that Plaintiffs have not carried their burden for the issuance of a temporary restraining order pursuant to Federal Rule of Civil Procedure 65 and Local Rule 4.05.

While absent from the Court's order, defendant also explained another interesting angle in its responsive brief.  Apparently, the parties have been engaged in separate litigations in Texas state and federal court, where the Texas state litigation is due to begin trial later this month.  According to defendant, Plaintiff has filed a number of motions seeking preliminary injunctions against defendant.  And defendant notes that the Texas state court denied a request for a temporary restraining order against defendant more than a year ago. 

Renewed motion for temporary restraining order, denied.

Tempur-Pedic North America, LLC v. Mattress Firm, Inc., Case No. 8:18-CV-2147-VMC-SPF (M.D. Fla. Aug. 31, 2018) (J. Covington)

Are Fees Recoverable Automatically When You Make a "Good" Offer of Judgement?

Nope.  The party seeking fees pursuant to a rejected Rule 68 Offer of Judgment still has the burden of showing a proper offer was made, was served, and was not accepted.

After what appears to have been 3+ years of contentious copyright infringement litigation, Plaintiffs were awarded $1,015.20 in damages against Defendants.  Plaintiffs owned copyrights in certain artwork, and Defendants had used this artwork in connection with certain "paint parties."  After this damage award, the parties engaged in various motion practice seeking sanctions and costs against each other.  The Court summarized the case's posture as follows:

Although this case presented fairly straightforward issues of copyright infringement, the case proceeded in anything but a straightforward manner. The nearly 400 docket entries in this case contain a plethora of motions for extensions of time and modification of deadlines, and other filings before the Court that can be best described as unprofessional and unnecessary squabbling between the parties. The tone of the parties’ papers was so poor, that early in the litigation the Magistrate Judge admonished the parties to “confine their presentations to facts and law that are relevant to the Court’s determination of the issues presented in the parties’ papers. Counsel shall refrain from caustic comments and characterizations of the motive of any party or counsel.” (Doc. 90, pp. 2–3). Unfortunately, this advice went unheeded, and the case dragged on for another three years.

After deciding neither sides' behavior rose to the level warranting sanctions, the Court addressed Defendants' argument that it was entitled to recover its fees and costs because Defendants had allegedly served an Offer of Judgment pursuant to Fed. R. Civ. P. 68 to settle the case for $2,500 -- more than Plaintiffs recovered at trial.  Problem is, Defendants did not  attach a copy of the offer of judgment that was purportedly served.

Instead, Defendants referenced an "Exhibit 1" in their briefing.  But Defendants did not attach an exhibit to the brief.  Instead, Defendants filed a brief that exceeded the page limits set by local rules and was admonished by the Court for doing so.  (The Court struck a few portions of the brief and refused to consider them in order to bring the brief's page count back into the 25-page limit set by the rules.)

The Court noted that it was not responsible for hunting for the evidence a moving party seeks to use to support its position:

The burden does not fall on this Court to ferret through the ballooned docket in this case to find evidence supporting Bloomington’s claims for fees and costs.  By failing to attach a Rule 68 offer to its Motion for fees, or to otherwise direct the Court where to find the document in the record, Bloomington has not carried its burden of establishing it is entitled to fees under Rule 68. 

Notwithstanding this admonition, the Court did search through the various docket entries and find something labeled "offer of judgment."  But there was not sufficient evidence showing such a document was served in accordance with the rules.   As such, the request for fees pursuant to Rule 68 were denied.

The Court then went through an analysis of Plaintiffs' request for recoverable costs, and awarded $4,482.95 as recoverable costs.

Motions for sanctions, denied.  Motion for fees, denied.  Motion for taxation of costs, granted.

Duncanson v Bloomington, Case No. 6:14-cv-704-PGB-KRS (M.D. Fla. Aug. 23, 2018) (J. Byron)

Are "Nationwide" Sales on Amazon Sufficient to Show Injury in M.D.Fla. for Venue Purposes?

Yes.

Thursday, LLC and Klhip, Inc. are both retailers that use Amazon to sell nail clippers online.  Klhip filed a number of claims with Amazon about Thursday.  In response, Amazon would take Thursday down and investigate.  Each time, Klhip's allegations have been found baseless (and Thursday's Amazon presence has been restored). 

Thursday, a Florida corporation located in Clearwater, sued Klhip for unfair competition, tortious interference, and violations of Florida's Deceptive and Unfair Trade Practices Act (FDUPTA) (among other claims).  Klhip, whose CEO lives in Idaho, sought to transfer the case there pursuant to either 28 U.S.C. 1391(b) (arguing that venue in M.D. Fla. was entirely improper) or 28 U.S.C. 1404(b) (arguing that it would be more convenient to litigate in Idaho).

Concerning the propriety of venue (28 U.S.C. 1391(b)), the Court quickly disposed of Klhip's challenge.  Thursday notes that it sells thousands of its nail clippers in this district, and Klhip's statements about Thursday (to Amazon) have hurt Thursday in this district, thus supporting jurisdiction  The Court agreed.

Concerning transfer for convenience of the parties, the Court rejected Klhip's argument that Idaho would be more convenient.  The analysis followed the typical analysis in a 1404 decision, but notably noticed the importance of the FDUPTA claim, explaining that: "[a] district judge in Florida indisputably has the advantage in an action based on Florida law and is most adept at applying Florida law.  As a result [familiarity with the governing law] distinctly disfavors transfer."

Motion to transfer, denied.
Thursday, LLC v. Klhip, Inc., Case No. 8:17-cv-1587-T-36AEP (M.D. Fla. July 11, 2018) (J. Honeywell)

Is it a good idea to ignore the Court's orders?

No.

Taser International, Inc. sued Phazzer Electronics, Inc. for patent infringement.  The discovery history appears tortured.  Taser pursued a number of motions to compel discovery responses.  Phazzer produced some documents (and apparently no emails), but the documents conflicted with representations Phazzer had made about its corporate structure and relationships with third parties. 

Then came the attempts to schedule depositions of "the handful of critical witnesses associated with Phazzer."  Apparently these critical witnesses for this closely-held company "are represented to be on vacation, out of the country, in surgery, or convalescing."  Taser had been attempting to schedule these depositions for 5 months.

With a Technology Tutorial scheduled in court, the Court ordered the parties and their counsel to attend in person, and cautioned that failure to do so could result in sanctions (including default judgment).  The day the Court entered that order, Phazzer's counsel filed a motion to withdraw.  That same day, the Court denied the motion to withdraw, and specifically ordered counsel to continue to represent Phazzer, notwithstanding counsel's representation of "irreconcilable differences."   The next day, Phazzer's counsel filed a "Notice of Termination of Legal Representation."   The Court struck that notice the same day because "because it is not a motion or a filing that is otherwise authorized by the Federal Rules of Civil Procedure or this Court’s Local Rules."

Phazzer's corporate representative did not attend the Technology Tutorial, failed to attend the corporate deposition of Phazzer, and a number of other Phazzer witnesses did not attend their court ordered depositions. 

The court then set a hearing on Phazzer's counsel's renewed motion to withdraw, specifically ordering a representative of Phazzer to attend.  No corporate representative attended.  Denying Phazzer's motion to stay the case, the Magistrate Judge observed: "it appears that Phazzer, with the assistance of its counsel, is attempting in bad faith to further delay this litigation."

In light of this abusive practice, the Court granted Taser's request for sanctions, and imposed the following relief:

• Striking of Phazzer's motion to dismiss;
• default entered in favor of Taser and against Phazzer on all claims;
• compensatory damages;
• treble damages for "Defendant's willful infringement" and "willful false advertisement";
• attorneys' fees and costs; and
• a permanent injunction.

Notably, while the Court could not name the third-party manufacturers in the injunction (for due process concerns), the Court did note: "it is clear that nonparties who assist the enjoined party in violating the injunction may be held in contempt by this Court."

The injunction should be helpful with ceasing importation of these infringing devices (electroshock cartridges).  Whether Taser will ever see any money from this judgment is another question entirely.  Moral of the story, Court orders are not something to be ignored.

Motion for Sanctions, granted.
Taser International, Inc. v. Phazzer Electronics, Inc., Case No. 6:16-cv-366-Orl-40KRS (M.D. Fla. July 21, 2018) (J. Byron)
 

Request for 2 Day Extension To Oppose Summary Judgment Motion?

Denied.  Ouch.

Commodores Entertainment Corporation has sued Thomas McClary, a former Commodores band member, for various trademark claims.  Commodores sought summary judgment.  Procedurally, McClary's attorney requested a first extension of 8 days for McClary to respond to the dispositive summary judgment motion.  The Commodores did not oppose the request and the Court granted it.

During that 8-day period, McClary's counsel attended a hearing in California state court in San Diego.  During that hearing, the California state court set a case for jury trial where McClary's counsel is lead trial.  That jury trial was set to begin on July 6 - the day after McClary's summary judgment response was due.

On the day of the summary judgment response deadline (July 5), McClary's counsel sought a 2-day extension of time to respond to the summary judgment motion.   Again, the Commodores did not oppose the request.    The next day (after the deadline has passed), the Court denied the motion with the following docket entry:

ENDORSED ORDER denying 415 Motion. Counsel has not demonstrated good cause for the requested second extension. Defendants have other counsel of record who could have assisted. Signed by Judge Roy B. Dalton, Jr. on 7/6/2018. (ZRR) (Entered: 07/06/2018)

Ouch.  Later that day, McClary submitted its summary judgment response brief.  And a few days later, McClary filed an unopposed motion requesting the brief be accepted as timely.  The Court has not yet ruled on that request.

As a practice pointer, it is difficult for the Courts to rule on requested extensions on the day of a particular deadline, and I have not studied the history of this case to see how well it has progressed.  But I presume the merits of the case will get resolved.

*** Update 7/10/2018 ***
The Court resolved McClary's request to accept the summary judgment

ENDORSED ORDER granting in part and denying in part 418 Motion Relief From Order, And To Accept Opposition To Motion For Summary Judgment As Timely Filed. The Response in Opposition will be considered as timely filed. In all other respects the motion is denied. Signed by Judge Roy B. Dalton, Jr. on 7/10/2018. (Dalton, Jr., Roy) (Entered: 07/10/2018)

Commodores Entertainment Corporation v McClary, Case No. 6:14-cv-01335-RBD-GJK (M.D. Fla. July 6, 2018) (J. Dalton, Jr.)