GREEN EDGE ENTERPRISES, LLC V. RUBBER MULCH ETC., LLC, (2010)

Extract

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GREEN EDGE ENTERPRISES, LLC V. RUBBER MULCH ETC., LLC, (2010)

United States Court of Appeals for the Federal Circuit

GREEN EDGE ENTERPRISES, LLC,

Plaintiff/Counterclaim Defendant-Appellant,

v.

RUBBER MULCH ETC., LLC AND RUBBER RESOURCES, LTD., LLP,

Defendants/Counterclaimants-Cross Appellants,

and

GROUNDSCAPE TECHNOLOGIES, LLC,

Defendant/Counterclaimant,

v.

INTERNATIONAL MULCH COMPANY AND

MICHAEL MILLER,

Counterclaim Defendants-Appellees,

and

JUDY SMITH AND LEE GREENBERG,

Counterclaim Defendants.

2009-1455, -1479

Appeals from the United States District Court for the Eastern District of Missouri in Case No. 02-CV-566, Magistrate Judge Terry I. Adelman.

GREEN EDGE v. RUBBER MULCH 2

Decided: September 7, 2010

JOE D. JACOBSON, Green Jacobson, P.C., of Clayton, Missouri, argued for plaintiff/counterclaim defendant-appellant. With him on the brief was ALLEN P. PRESS.

RONALD D. FOSTER, Ronald Foster, P.C., of South Bend, Indiana, argued for defendants/counterclaimants-cross appellants.

JENNIFER E. HOEKEL, Senniger Powers LLP, of St.

Louis, Missouri, argued for counterclaim defendants-appellees. With her on the brief was B. SCOTT EIDSON.

Before RADER, Chief Judge, and LOURIE and BRYSON,

Circuit Judges.

LOURIE, Circuit Judge.

Green Edge Enterprises, LLC ("Green Edge") appeals from the decision of the United States District Court for the Eastern District of Missouri granting summary judgment of invalidity of U.S. Patent 5,910,514 (the "'514 patent") for violation of the best mode requirement. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, No. 4:02CV566, 2008 U.S. Dist. Lexis 23378 (E.D. Mo. Mar. 25, 2008) ("Best Mode Op."). Rubber Mulch and Rubber Resources cross-appeal from the court's dismissal of their claim of trademark invalidity for lack of a case or controversy. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, 509 F. Supp. 2d 814 (E.D. Mo. 2007) ("Trademark Dismissal"). Rubber Resources cross-appeals from the court's dismissal of its Lanham Act claim for failure to 3

GREEN EDGE v. RUBBER MULCH

prove damages. Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, No. 4:02CV566, 2009 U.S. Dist. Lexis 53411 (E.D. Mo. June 24, 2009) ("Lanham Act Dismissal"). We reverse in whole or in part on all three issues and remand.

BACKGROUND

A. '514 Patent Claims

Green Edge owns the '514 patent and sued Rubber Mulch and Rubber Resources, among others, for infringement. The '514 patent claims a synthetic mulch that is colored with a "water based acrylic colorant" to imitate natural mulch. For example, claim 1 reads as follows:

1. A synthetic mulch material sized, shaped, and colored to imitate a natural mulch, wherein said synthetic mulch is comprised of:

a) a plurality of rubber particles, with the rubber selected from the ...

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