Arctic Cat Inc. v. Bombardier Recreational Prods., Inc.

• Decision Date: 10 August 2018
• Docket Number: Case No. 14-cv-62369-BLOOM/Valle
• Citation: 334 F.Supp.3d 1238
• Parties: ARCTIC CAT INC., Plaintiff, v. BOMBARDIER RECREATIONAL PRODUCTS, INC., and BRP U.S. Inc., Defendants.
• Court: U.S. District Court — Southern District of Florida

334 F.Supp.3d 1238

ARCTIC CAT INC., Plaintiff,

v.BOMBARDIER RECREATIONAL PRODUCTS, INC., and BRP U.S. Inc., Defendants.

Case No. 14-cv-62369-BLOOM/Valle

United States District Court, S.D. Florida.

Signed August 10, 2018

Aaron A. Myers, Diane L. Peterson, Niall MacLeod, Kutak Rock, LLP, Nicholas S. Boebel, Hansen Reynolds LLC, Minneapolis, MN, Howard Mitchell Bushman, The Moskowitz Law Firm, PLLC, Coral Gables, FL, Sarah Clasby Engel, The Engel Firm, Coconut Grove, FL, C. Alex Shank, Pro Hac Vice, Gregg F. Locascio, Pro Hac Vice, Nathan S. Mammen, Pro Hac Vice, Kirkland & Ellis LLP, Washington, DC, Lance August Harke, Harke Law LLP, Miami Shores, FL, for Plaintiff.

Jennifer J. John, Pro Hac Vice, Louis W. Tompros, Pro Hac Vice, William F. Lee, Pro Hac Vice, Sameer Ahmed, Pro Hac Vice, Wilmer Cutler Pickering Hale and Dorr, LLP, Boston, MA, Rachael L. Rodman, Pro Hac Vice, John D. Luken, Pro Hac Vice, Lauren E. Ingebritson, Pro Hac Vice, Joshua A. Lorentz, Pro Hac Vice, Dinsmore & Shohl, LLP, Cincinnati, OH, Scott M. Sarason, Michael Roland Holt, Rumberger Kirk & Caldwell, Miami, FL, Jason M. Wejnert, Pro Hac Vice, Dinsmore & Shohl, LLP, Chicago, IL, for Defendants.

ORDER ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

BETH BLOOM, UNITED STATES DISTRICT JUDGE

THIS CAUSE is before the Court upon Defendants Bombardier Recreational Products, Inc. and BRP U.S. Inc.'s (together, "BRP") Motion for Summary Judgment and Memorandum of Law, ECF No. [307] ("BRP's Motion"), filed on June 1, 2018 and Plaintiff Arctic Cat, Inc.'s ("Arctic Cat") Sealed Motion for Summary Judgment, ECF No. [310] ("Arctic Cat's Motion"), also filed on June 1, 2018. The Court has reviewed the Motions, the materials filed in support and opposition, record, and the case law, and is otherwise fully advised.

I. The Federal Circuit Mandate

The Court writes for the parties and assumes familiarity with the procedural and factual background of this patent infringement case. On March 19, 2018, the Federal Circuit issued its mandate in the appeal of this matter following a jury trial. ECF No. [274]; see also Arctic Cat Inc. v. Bombardier Recreational Prod. Inc. , 876 F.3d 1350 (Fed. Cir. 2017). In its opinion, the Federal Circuit affirmed this Court's denial of judgment as a matter of law that the patent claims asserted by Arctic Cat would have been obvious, that the jury-awarded royalty rate should be vacated, and that BRP did not willfully infringe the asserted claims. Arctic Cat , 876 F.3d at 1372. The Federal Circuit further affirmed this Court's orders granting an ongoing royalty and trebling damages. Id. at 1372. However, the Federal Circuit vacated that portion of the Court's order denying judgment as a matter of law as to marking under 35 U.S.C. § 287 and remanded for a new trial, finding that this Court erred when it failed to hold that "[t]he burden of proving compliance with marking is and at all times remains on the patentee." Id. at 1367, 1372.

In reviewing the issue of marking, the Federal Circuit held that "an alleged infringer who challenges the patentee's compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked ‘patented articles’ subject to § 287." Id. at 1368. The Federal Circuit found that BRP had satisfied the "low bar" of the burden of production by producing evidence of the licensing agreement between Honda and Arctic Cat showing Honda's license to practice "Arctic Cat patents that patently cover Arctic Cat's Controlled Thrust Steering methods, systems and developments" and identifying fourteen Honda personal watercrafts ("PWCs") from three versions of its Aquatrax series sold between 2002 and 2009 which allegedly practiced the patents at issue. Id.

The Federal Circuit found, however, that once BRP had satisfied this burden of production, the Court should have required the patentee, here, Arctic Cat, to prove compliance with § 287(a). "Arctic Cat, therefore, did not have a fair opportunity to develop its case regarding the Honda PWCs at trial." Id. at 1369. Accordingly, the Federal Circuit vacated this Court's judgment as to marking "so that Arctic Cat has an opportunity to proffer evidence related to the identified Honda PWCs." Id. The Federal Circuit remanded for new trial and left the issue of additional discovery to the discretion of this Court. Id. at 1369, 1369 n.2.

After issuance of the mandate, the Court entered an order requiring the parties to advise the Court whether the parties believed any additional discovery was necessary, and whether the parties planned to file any pretrial motions. In addition, the Court required the parties to submit concise statements of the issues remaining for remand. See ECF No. [275]. The parties thereafter complied, filing the Joint Scheduling Report, ECF No. [290]; the Concise Statement of Issues filed by Arctic Cat, ECF No. [291]; and the Concise Statement of Issues filed by BRP, ECF No. [293]. Meanwhile, Arctic Cat filed a Sealed Motion for Entry of Modified Judgment and Execution of Partial Judgment, ECF No. [284] ("Judgment Motion"). The Court set a briefing schedule for the Judgment Motion, ECF No. [286], and BRP filed an opposition to the Judgment Motion on April 23, 2018, ECF No. [292]. Arctic Cat replied on April 30, 2018. ECF No. [295]. On May 11, 2018 BRP filed a Motion for Protective Order Regarding Plaintiff's Notice of Deposition, ECF No. [298] ("Motion for Protective Order").

Four days later, the Court entered an order ruling on all pending motions and setting a trial schedule based on the parties' representations in the Joint Scheduling Report and the Concise Statements of Issues. ECF No. [300] ("Omnibus Order"). In the Omnibus Order, the Court noted that the Federal Circuit found that "the only dispute between the parties is whether any of the Honda PWCs was covered by the patent claims at issue." Arctic Cat Inc. v. Bombardier Recreational Prod. Inc. , 876 F.3d 1350, 1367 (Fed. Cir. 2017). Because the Federal Circuit found BRP had met its burden of production, the burden to show compliance with the marking requirements of Section 287 on remand lay with Arctic Cat. The Court accordingly allowed limited discovery and set a pretrial briefing schedule. The parties engaged in discovery and on June 1, 2018 filed the cross-motions now before the Court. Thereafter, on June 18, 2018, Arctic Cat and BRP both moved in limine, ECF Nos. [323] and [327], and filed a pretrial stipulation, ECF No. [326]. The Court now addresses the motions pending before it.

II. LEGAL STANDARD

The standard of review for cross-motions for summary judgment does not differ from the standard applied when only one party files a motion. See Am. Bankers Ins. Grp. v. United States , 408 F.3d 1328, 1331 (11th Cir. 2005). Under Federal Rule of Civil Procedure 56, summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Celotex Corp. v. Catrett , 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ; see also Fed. R. Civ. Pro. 56(a). The parties may support their positions by citation to the record, including, inter alia , depositions, documents, affidavits, or declarations. See Fed. R. Civ. P. 56(c). An issue is genuine if "a reasonable trier of fact could return judgment for the non-moving party." Miccosukee Tribe of Indians v. United States , 516 F.3d 1235, 1243 (11th Cir. 2008) (quoting Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247–48, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ). A fact is material if it "might affect the outcome of the suit under the governing law." Id. (quoting Anderson , 477 U.S. at 247–48, 106 S.Ct. 2505 ).

The moving party shoulders the initial burden to demonstrate the absence of a genuine issue of material fact. See Shiver v. Chertoff , 549 F.3d 1342, 1343 (11th Cir. 2008). Once the moving party has met its burden, the non-movant must "go beyond the pleadings" and show that there is a genuine issue for trial. Celotex , 477 U.S. at 324, 106 S.Ct. 2548 ; see also Fed. R. Civ. Pro. 56(c)(1). To avoid summary judgment, the non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (emphasis added). A movant must present evidence demonstrating that it can establish the basic elements of his claim. Celotex , 477 U.S. at 322, 106 S.Ct. 2548. After the nonmoving party has responded to the motion for summary judgment, a court must grant summary judgment if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Thus, "[a] ‘judge's function’ at summary judgment is not ‘to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial.’ " Tolan v. Cotton , 572 U.S. 650, 134 S.Ct. 1861, 1866, 188 L.Ed.2d 895 (2014) (per curiam) (quoting Anderson , 477 U.S. at 249, 106 S.Ct. 2505 ) (emphasis added).

As before the Court here, "cross motions for summary judgment may be probative of the nonexistence of a factual dispute, but this procedural posture does not automatically empower the court to dispense with the determination whether questions of material fact exist." Georgia State Conference of NAACP v. Fayette Cty. Bd. of Comm'rs , 775 F.3d 1336, 1345–46 (11th Cir. 2015). In particular, where "the parties respond[ ] to each respective summary judgment motion with disputes as to the ‘undisputed’ facts, add[ ] ‘material facts’ of their own, and then repl[y] with subsequent objections to the other party's additional facts," the mere filing of cross motions for summary judgment is not conclusive. Id. Thus, where the parties disagree as to the facts, summary judgment cannot be...