Andersen Manufacturing Inc. v. Wyers Products Group, Inc.

          ORDER DENYING PLAINTIFF'S MOTION TO AMEND JUDGMENT

          William J. Martinez, United States District Judge.

         Plaintiff Andersen Manufacturing, Inc. (“Andersen”), brought this suit against Defendant Wyers Products Group, Inc. (“Wyers”), for patent infringement. The inventions at issue are an adjustable-height trailer hitch made from aluminum, as described in U.S. Patent No. 7, 156, 412 (“412 Patent”); and a process for manufacturing that hitch, as described in U.S. Patent No. 7, 222, 510 (“510 Patent”). The Court entered final judgment in Wyers's favor on February 7, 2019. (ECF No. 115.)

         Currently before the Court is Andersen's Motion to Amend Judgment. (ECF No. 119.) Despite the motion's title, Andersen asks the Court to vacate judgment under Federal Rule of Civil Procedure 60(b)(6), thus permitting this case to proceed against Wyers for infringement of the recently reissued (and heavily amended) version of the 412 Patent. For the reasons explained below, the Court denies this motion.

         I. LEGAL STANDARD

         “On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for [six] reasons[.]” Fed.R.Civ.P. 60(b). The first five reasons are scenarios that arise with enough frequency to be specifically called out (e.g., excusable neglect, newly discovered evidence, satisfaction of judgment). See Fed. R. Civ. P. 60(b)(1)-(5). Then Rule 60(b)(6) permits a court to grant relief for “any other reason justifying relief.” While relief under the five enumerated clauses of Rule 60(b)(1)-(5) is “extraordinary and may only be granted in exceptional circumstances, ” “Rule 60(b)(6) relief is even more difficult to attain and is appropriate only when it offends justice to deny such relief.” Yapp v. Excel Corp., 186 F.3d 1222, 1231-32 (10th Cir. 1999).^[1]

         Ultimately, all Rule 60(b) motions are addressed to the sound discretion of the trial court. Zimmerman v. Quinn, 744 F.2d 81, 82 (10th Cir. 1984).

         II. BACKGROUND

         This case began in January 2016 in the United States District Court for the District of Idaho, the Hon. B. Lynn Winmill presiding. (ECF No. 1.) In May 2016, Wyers filed with the U.S. Patent and Trademark Office (“PTO”) a request for ex parte reexamination of the 412 Patent. (ECF No. 28-1 at 3; ECF No. 29-2 through 29-9.)^[2]Shortly afterward, Wyers moved for a stay of the lawsuit pending the outcome of the reexamination. (ECF Nos. 28, 28-1.) Andersen opposed, arguing that whether the PTO would grant Wyers's request remained speculative, and, in any event, Wyers's request for ex parte reexamination (as opposed to inter partes review) would not definitively resolve anything because the results of ex parte proceedings may be re-litigated in court. (ECF No. 34 at 2-3.) Andersen further asserted that “reexaminations could take five years or more, ” and so a stay “would be highly prejudicial” due to the delay.” (Id. at 3; see also id. at 10 (“Although[] the Patent Office resolves 95% of ex parte reexaminations within 25 months, if there is an appeal to the Patent Trial and Appeals Board or the Federal Circuit, the reexamination can take much longer.”).)

         In August 2016-before Judge Winmill ruled on the motion to stay-Andersen informed the Court that the PTO had rejected Wyers's reexamination request. (ECF No. 41.) Broadly speaking, the PTO found that the request was insufficiently specific, and it gave Wyers an opportunity to resubmit. (ECF No. 41-2 at 2-12.)

         In September 2016-still before a ruling from Judge Winmill-Wyers informed the Court that it had resubmitted to the PTO. (ECF No. 42.) Later that same month, Wyers informed the Court that the PTO had granted the resubmitted reexamination request. (ECF Nos. 45-1, 45-3.) Andersen responded that it still opposed to stay because “[r]esolution of the reexamination including any appeal could take five years or more.” (ECF No. 49 at 1-2.)

         Judge Winmill denied the motion to stay in December 2016. (ECF No. 55.) He reasoned that “[m]ost of these reexaminations, including the inevitable appeal to the Patent Trial and Appeal Board, take three to five years to resolve” and “the simplification of issues is not automatic because if the patents survive, Wyers will be able to relitigate the issues here because it requested an ex parte reexamination, which has no preclusive effect.” (Id. at 1.) In addition, Judge Winmill noted that the parties had fully briefed claim construction and were due to appear the following week for a claim construction hearing. (Id. at 2.)

         In April 2017, Wyers again moved to stay, noting that the PTO had (in nonfinal actions) rejected all of the 412 Patent's claims, and Andersen had submitted claim amendments. (ECF No. 63-1.) Andersen filed its opposition in May 2017, pointing out Judge Winmill's prior reliance on the three-to-five-years estimate for reexamination proceedings, and arguing that nothing had changed to justify revisiting the denial of the original motion to stay. (ECF No. 64.)

         Later in May 2017-before Judge Winmill ruled on the renewed motion to stay- Wyers filed a motion to transfer the lawsuit to the District of Colorado, relying on a United States Supreme Court decision from earlier that month, TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514 (2017). (See ECF No. 67-1.) TC Heartland held that, by statute, a domestic corporation can only be sued for patent infringement in the state of its incorporation or where it has committed acts of infringement and has a regular and established place of business. 137 S.Ct. at 1516- 17 (construing 28 U.S.C. § 1400(b)). Wyers, a Colorado corporation with its principal place of business here, accordingly argued for transfer. (ECF No. 67-1.) Andersen opposed, arguing that Wyers had already admitted that venue was appropriate, and that the Supreme Court's change in the law was not sufficient to relieve Wyers of that admission. (ECF No. 69.)

         Judge Winmill granted the motion to transfer in January 2018. (ECF No. 78.) The renewed motion to stay remained outstanding at that time. Shortly after transfer, U.S. Magistrate Judge Scott T. Varholak denied the renewed motion without prejudice, essentially reasoning that it was outdated in light of the lapse of time since its filing and the subsequent transfer. (ECF No. 90.)

         Judge Varholak held a telephonic status conference on March 1, 2018.^[3] Judge Varholak asked the parties for their positions on whether a new scheduling order was needed in light of the transfer. Counsel for Andersen stated that deadlines which had already passed, such as fact discovery, did not need to be reopened, but “it would make sense to push back” upcoming expert discovery deadlines and other unspecified “dates” in light of ongoing reexamination proceedings. In response, counsel for Wyers announced that Wyers would be filing a summary judgment motion the following week, “essentially closing the case based on the invalidity of all the original claims [of the 412 Patent] . . . as well as noninfringement of the two method claims [of the 510 Patent].” As for proceedings beyond that, counsel for Wyers asserted that any claims that might ...