United States District Court, D. Colorado
L-3 COMMUNICATIONS CORPORATION; and L-3 SERVICES, INC., Plaintiffs,
JAXON ENGINEERING & MAINTENANCE, INC.; JONI ANN WHITE; RANDALL K. WHITE; SUSAN RETTIG; CHARLES RETTIG; JAMES YOUNGMAN; JERRY LUBELL; KELLY RICE; and JOHN MCCLURE, Defendants
For William A. Martinez, Special Master: William A. Martinez, LEAD ATTORNEY, William A. Martinez, P.C., Pueblo, CO.
For Fitch, Even, Tabin & Flannery LLP, Interested Party: Steven C. Schroer, Fitch, Even, Tabin & Flannery-Boulder, Boulder, CO.
For L-3 Communications Corporation, L-3 Services, Inc., Plaintiffs: Benjamin G. Chew, Nigel Lance Wilkinson, Manatt, Phelps & Phillips, LLP-DC, Washington, DC; Bryan Patrick Collins, Robert M. Fuhrer, Pillsbury Winthrop Shaw Pittman, LLP-McLean, McLean, VA; Karen Lisa Weiss, Steven L. Levitt & Associates, P.C., Mineola, NY; Lacy L. Kolo, Patton Boggs, LLP-DC, Washington, DC; Steven Leon Levitt, Steven L. Levitt & Associates, P.C., Williston Park, NY.
For Jaxon Engineering & Maintenance, Inc., Joni Ann White, Randall K. White, Scott White, Susan Rettig, Charles Rettig, James Youngman, Jerry Lubell, Kelly Rice, John McClure and " John Does 1-25," said names being fictitious as such names are unknown at this time, Defendants: Robert Tyler Goodwyn, IV, LEAD ATTORNEY, Claire Molle' Maddox, Daniel Edward Johnson, Derek Allen Auito, Lora Ann Brzezynski, McKenna Long & Aldridge, LLP-DC, Washington, DC; Jennette C. Roberts, Steven Michael Masiello, McKenna Long & Aldridge, LLP-Denver, Denver, CO.
For Jaxon Engineering & Maintenance, Inc., Counter Claimant: Claire Molle' Maddox, Daniel Edward Johnson, Lora Ann Brzezynski, McKenna Long & Aldridge, LLP-DC, Washington, DC; Jennette C. Roberts, Steven Michael Masiello, McKenna Long & Aldridge, LLP-Denver, Denver, CO.
For L-3 Communications Corporation, L-3 Services, Inc., Counter Defendants: Benjamin G. Chew, Nigel Lance Wilkinson, Manatt, Phelps & Phillips, LLP-DC, Washington, DC; Karen Lisa Weiss, Steven L. Levitt & Associates, P.C., Mineola, NY.
OPINION AND ORDER GRANTING, IN PART, MOTION FOR SUMMARY JUDGMENT
Honorable Marcia S. Krieger, Chief United States District Judge.
THIS MATTER comes before the Court pursuant to the Plaintiffs' Motion for Partial Summary Judgment (# 897), the Defendants' response (# 941), and the Plaintiff's reply (# 966). Also pending are several motions seeking to restrict public access to certain filings (# 914, 959, 960, 1000), some of which are opposed; a Joint Motion (# 981) by the parties requesting a claim construction hearing; and two motions to withdraw as counsel (# 995, 996).
The Court briefly recites the salient facts here, and elaborates as necessary in its analysis. The Plaintiffs (collectively, " L-3" ) are engaged in the business of testing electronic components for various clients, including the United States Government and military agencies. In or about 2008, several L-3 employees, including some of the individual Defendants here, left L-3 to create and/or join a competing business, Defendant Jaxon Engineering & Maintenance, Inc. (" Jaxon" ). L-3 alleges that these employees took various L-3 trade secrets and other proprietary materials to use for Jaxon's benefit, and that Jaxon is infringing on certain patents held by L-3.
The parties bring numerous claims and counterclaims against each other, most of which fall outside the scope of this Order. In the instant motion, L-3 seeks summary judgment on certain affirmative defenses and counterclaims by Jaxon: (i) the Defendants' affirmative defense that " the asserted
patents are invalid and/or unenforceable under 35 U.S.C. § 102, 103, and/or 112," with L-3 arguing that certain individual Defendants are named inventors on the patents and thus estopped fro asserting invalidity, and the remaining Defendants are in privity therewith; (ii) the affirmative defense that " L-3 is precluded from asserting patent infringement . . . under 28 U.S.C. § 1498(a)," in that the Court has already dismissed Jaxon's counterclaim premised on that statute; and (iii) Jaxon's counterclaim for a declaratory judgment that " L-3 has engaged in patent misuse through its bad faith attempt to enforce [certain patents]," because Jaxon cannot show the necessary elements of such a counterclaim.
Separately, the parties have filed several motions seeking to restrict public access to various filings, requested the setting of a claim construction hearing, and certain of L-3's counsel have moved to withdraw.
A. Summary judgment motion
1. Standard of review
Rule 56 of the Federal Rules of Civil Procedure facilitates the entry of a judgment only if no trial is necessary. See White v. York Intern. Corp., 45 F.3d 357, 360 (10th Cir. 1995). Summary adjudication is authorized when there is no genuine dispute as to any material fact and a party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a). Substantive law governs what facts are material and what issues must be determined. It also specifies the elements that must be proved for a given claim or defense, sets the standard of proof and identifies the party with the burden of proof. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Kaiser-Francis Oil Co. v. Producer's Gas Co., 870 F.2d 563, 565 (10th Cir. 1989). A factual dispute is " genuine" and summary judgment is precluded if the evidence presented in support of and opposition to the motion is so contradictory that, if presented at trial, a judgment could enter for either party. See Anderson, 477 U.S. at 248. When considering a summary judgment motion, a court views all evidence in the light most favorable to the non-moving party, thereby favoring the right to a trial. See Garrett v. Hewlett Packard Co., 305 F.3d 1210, 1213 (10th Cir. 2002).
If the movant has the burden of proof on a claim or defense, the movant must establish every element of its claim or defense by sufficient, competent evidence. See Fed.R.Civ.P. 56(c)(1)(A). Once the moving party has met its burden, to avoid summary judgment the responding party must present sufficient, competent, contradictory evidence to establish a genuine factual dispute. See Bacchus Indus., Inc. v. Arvin Indus., Inc., 939 F.2d 887, 891 (10th Cir. 1991); Perry v. Woodward, 199 F.3d 1126, 1131 (10th Cir. 1999). If there is a genuine dispute as to a material fact, a trial is required. If there is no genuine dispute as to any material fact, no trial is required. The court then applies the law to the undisputed facts and enters judgment.
If the moving party does not have the burden of proof at trial, it must point to an absence of sufficient evidence to establish the claim or defense that the non-movant is obligated to prove. If the respondent comes forward with sufficient competent evidence to establish a prima facie claim or defense, a trial is required. If the respondent fails to produce sufficient competent evidence to establish its claim or defense, then the movant is entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).
2. Inventor estoppel