Unitronics (1989) (R " G) Ltd. v. Gharb, Civil Action No. 06-27 (RMC).

• Decision Date: 30 January 2008
• Docket Number: Civil Action No. 06-27 (RMC).
• Citation: 532 F.Supp.2d 25
• Parties: UNITRONICS (1989) (R " G) LTD., et al., Plaintiffs, v. Samy GHARB, Defendant.
• Court: U.S. District Court — District of Columbia

532 F.Supp.2d 25

UNITRONICS (1989) (R " G) LTD., et al., Plaintiffs, v. Samy GHARB, Defendant.

Civil Action No. 06-27 (RMC).

United States District Court, District of Columbia.

January 30, 2008.

Glenn J. Perry; Sterne, Kessler, Goldstein & Fox, PLLC, Washington, DC, Brendan E. Squire, Dale Lischer, Deborah

A. Heineman, Todd Douglas Williams, Smith, Gambrell & Russell, LLP, Atlanta, GA, for Plaintiffs.

MEMORANDUM OPINION

ROSEMARY M. COLLYER, District Judge.

Plaintiffs Unitronics (1989) (R " G) Ltd. and Unitronics, Inc. (collectively, "Unitronics") move for voluntary dismissal without prejudice under Fed.R.Civ.P. 41(a)(2) as to Count II (patent invalidity) of their complaint against Defendant Samy Gharb, conditioned on the Court granting Unitronics' contemporaneous motion for injunctive relief. The Court will grant both motions. Mr. Gharb's pending motion for payment will be denied.

I. BACKGROUND FACTS

Unitronics began this suit by filing its complaint against Mr. Gharb on January 10, 2006. It sought a declaratory judgment of non-infringement of United States Patent No. 6,552,654 ("the Gharb Patent") (Count I); a declaratory judgment that the Gharb Patent was invalid (Count II); and a judgment that Mr. Gharb had intentionally interfered with Unitronics' contractual relations (Count III). See Compl. [Dkt. # 1] at 6-8. Mr. Gharb, a citizen of Switzerland, has proceeded pro se and has been afforded considerable leeway by the Court as a result.

On September 25, 2007, the Court entered a Memorandum Opinion and Order which granted Unitronics' motion for summary judgment on Count I, finding that Unitronics' manufacture, use, sale, offers to sell, or importation of Programmable Logic Controllers ("PLCs") does not infringe the Gharb Patent. See Dkt. ## 63 & 64. The Court found that none of Mr. Gharb's infringement assertions had merit. The Court declined to award attorneys' fees to Unitronics, in part due to Mr. Gharb's representation that he is without assets to retain counsel. On November 1, 2007, Plaintiffs filed the pending motion for injunctive relief because "[o]n October 26, 2007, despite the Court's ruling of non-infringement and despite the expiration of the Gharb patent, Gharb continued to assert infringement of the Gharb patent by sending copies of Unitronics promotional materials to Unitronics (and perhaps others) marked up to indicate that those products were covered or made in accordance with the disclosures and claims of the Gharb patent." See Pls.' Mem. in Supp. of Mot. for Injunctive Relief ("Pls.' Mem.") [Dkt. # 69] at 2, Ex. C.

Mr. Gharb filed a Memorandum in Opposition to Motion for Injunctive Relief Against Samy Gharb on January 4, 2008. See Dkt. # 73. In it, he argued that. Unitronics infringes upon the Gharb Patent. Id. at 1. He also sent a letter to the Court titled "Final Judgment Order," requesting judgment in his favor. See Dkt. # 75. In response, the Court issued its Order Informing Defendant of Case Status and Denying Defendant's Motion for Reconsideration. See Dkt. # 74 (noting that the only new evidence in the case since the Court's Sept. 25, 2007 Memorandum Opinion was that Mr. Gharb allowed his patent to expire by failing to pay the required maintenance fees). Based on the database records of the United States Patent and Trademark Office, the Gharb Patent expired on April 22, 2007, due to Mr. Gharb's non-payment of the maintenance fees required under 37 C.F.R. § 1.362. See Pls.' Mem., Exs. A & B. Mr. Gharb then filed a Motion for Payment, which Unitronics has opposed. See Dkt.# 76 & 77.

II. ANALYSIS

A. Voluntary Dismissal

Rule 41(a)(2) of the Federal Rules of Civil Procedure prohibits a plaintiff from dismissing an action in which an answer has been filed, as is true here, except with court approval "and upon such terms and conditions as the court deems proper." Fed. R.Civ.P. 41(a)(2). The purpose of Rule 41(a)(2) is to protect a defendant from undue prejudice or inconvenience from a plaintiff's voluntary dismissal. Collins v. Baxter Healthcare Corp., 200 F.R.D. 151, 152 (D.D.C.2001). Therefore, a plaintiff's motion to dismiss voluntarily should be granted unless dismissal will inflict clear legal prejudice on a defendant. Conafay v. Wyeth Laboratories, 841 F.2d 417, 419 (D.C.Cir.1988). Since the Court has entered its declaratory judgment that Unitronics has not infringed the Gharb Patent and that none of Mr. Gharb's infringement counterclaims had merit, no legal prejudice would be imposed on Mr. Gharb by granting the motion to dismiss Count II voluntarily.¹

B. Permanent Injunction

Unitronics also seeks an injunction to enjoin Mr. Gharb permanently from: 1) communicating threats or assertions of infringement based on the subject matter disclosed in the Gharb Patent, against Unitronics or Unitronics customers based on Unitronics' manufacture, use, sale, offers to sell, or importation of PLCs; 2) bringing suit under the Gharb Patent against Unitronics or Unitronics' customers based on their manufacture, use, sale, offers to sell, or importation of PLCs; and 3) interfering with the contractual relations between Unitronics and its customers by referring to the Gharb Patent. An injunction would moot Count III of the complaint, which alleges interference with contractual relations.

According to well-established principles of equity, a plaintiff seeking a permanent injunction must satisfy a four-factor test before a court may grant such relief. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 126 S.Ct. 1837, 1839, 164 L.Ed.2d 641 (2006). A plaintiff must succeed on the merits of its claim and also show: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. See id. The Patent Act specifically allows for injunctive relief:

The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

35 U.S.C. § 283.

In this case, Mr. Gharb, as owner of the now-expired Gharb Patent, asserted counterclaims that the Unitronics PLCs infringed his patent. Unitronics sought a declaratory judgment that its PLCs do not and did not infringe the Gharb Patent. The Court found no infringement. In such a circumstance, precedent under patent law allows the court to enjoin the owner of the patent, Mr. Gharb, from asserting infringement or prosecuting any action in which infringement is asserted. Leishman v. Radio Condenser Co., 167 F.2d 890, 893 (9th Cir.1948).(citing Kessler v. Eldred, 206 U.S. 285, 27 S.Ct. 611, 51 L.Ed. 1065 (1907)); see also Shanghai Meihao Elec., Inc., v. Leviton Mfg. Co. 212 Fed.Appx. 977 (Fed.Cir.2007). Kessler grants a limited trade right which is "the right to have that which [a court had determined the manufacturer] lawfully produces freely bought and sold without restraint or interference." Id. (citing Rubber Tire Wheel Co. v. Goodyear Tire and Rubber Co., 232 U.S. 413, 418-419, 34 S.Ct. 403, 58 L.Ed. 663 (1914)). "It is a right which attaches to its...