United States District Court, D. Colorado
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 ...