Marquip, Inc. v. Fosber America, Inc., 96-C-726-S.

• Decision Date: 08 December 1998
• Docket Number: No. 96-C-726-S.,96-C-726-S.
• Citation: 30 F.Supp.2d 1142
• Parties: MARQUIP, INC., Plaintiff, v. FOSBER AMERICA, INC., Fosber SPA and United Container Machinery, Inc., Defendants.
• Court: U.S. District Court — Western District of Wisconsin

30 F.Supp.2d 1142

MARQUIP, INC., Plaintiff, v. FOSBER AMERICA, INC., Fosber SPA and United Container Machinery, Inc., Defendants.

No. 96-C-726-S.

United States District Court, W.D. Wisconsin.

December 8, 1998.

David J. Harth, Foley & Lardner, Madison, WI, for Plaintiff.

David L. De Bruin, Michael, Best & Friedrich, for Fosber America, Inc., Fosber SPA.

John E. Nathan, Daniel M. Gantt, Catherine Nyarady, Fish & Neave, New York, NY, and John F. Hovel, Kravit, Gass Hovel & Leitner, Milwaukee, WI, for United Container Machinery, Inc.

MEMORANDUM and ORDER

SHABAZ, Chief Judge.

Plaintiff Marquip, Inc. commenced this patent infringement action against the defendants Fosber America, Inc., Fosber SpA and United Container Machinery, Inc. alleging that the paperboard downstackers manufactured and sold by defendants infringe United States Patents Nos. 4,200,276 (the '276 patent) and 4,273,325 (the '325 patent). On May 21, 1997 this Court granted summary judgment in defendants' favor finding no literal infringement under either patent. On June 10, 1997 a second summary judgment decision was rendered in defendants' favor finding no infringement under the doctrine of equivalents. Judgment was entered accordingly dismissing plaintiff's complaint. On May 19, 1998 the Federal Circuit Court of Appeals issued a decision affirming all aspects of this Court's judgment except that portion dismissing plaintiff's claim for infringement of the '276 patent under the doctrine of equivalents, which it vacated and remanded.

On September 14, 1998 this Court considered the issue of infringement under the doctrine of equivalents, again granting summary judgment in favor of the defendants on the basis that defendants' equipment does not infringe the '276 patent. The matter is now before the Court on plaintiff's motion for relief from judgment pursuant to Rule 60(b) on the basis of allegedly new facts concerning the operation of defendants' machines.

BACKGROUND

This Court's summary judgment decisions of May and June 1997 were based on undisputed facts concerning the operation of defendants' downstackers, including the presence of a functional interrupt mechanism in all versions of the accused devices. The undisputed facts led to the entry of judgment in defendant's favor on June 11, 1997 ("1997 judgment") dismissing plaintiff's complaint on the basis that there was no infringement, literal or under the doctrine of equivalents, of any claim of the '276 patent.

Those facts remained undisputed on Appeal and were applied to the '276 claims in the infringement analysis of the Federal Circuit in its decision of May 19, 1998. The Court of Appeals affirmed all aspects of the June judgment "except for that portion which dismiss[ed] Marquip's claim for infringement of the '276 patent under the doctrine of equivalents," which it vacated. The Court of Appeals partially vacated the initial judgment not on the basis of factual dispute but because it disagreed with the claim construction of this Court. Accordingly, the matter was remanded for the purpose of applying the undisputed facts to the claims as construed by the Court of Appeals in light of the legal limits of the doctrine of equivalents. Appellate decision at 9. Upon remand each party represented in its pretrial report that no further discovery was contemplated.

On September 14, 1998 after undertaking the analysis suggested by the Court of Appeals on remand, this Court again entered judgment in defendants' favor finding no infringement as a matter of law ("1998 judgment"). Almost simultaneously plaintiff asserts that it became aware of new facts concerning the operation of defendants' downstackers which are the basis for the present motion for relief from judgment. Plaintiff appealed the 1998 judgment and brought this Rule 60(b) motion.

It is not disputed that defendants' machines operate in the manner described in the previous decisions for most cardboard stacking operations. Specifically, the previously undisputed facts correctly describe downstacker operation for all but the last stack in an order. This final stack is part of what is commonly referred to as "order change". An order change occurs when sufficient sheets of a particular size and shape are cut and the cardboard processing machinery must convert to cut and handle sheets of a different size. Because this conversion involves the entire dry end of the cardboard processing machinery it varies from the typical process of separating groups of sheets within an order for stacking.

The following is a general summary of the undisputed order change process. When the machine detects that sufficient sheets to complete an order have been created, or when a manual control directs a change of order, a rotary shear upstream of the cut-off knife and shingling nip is fired severing the cardboard web. Simultaneously, conveyors downstream of the shear are accelerated creating a gap between the final sheet of the old order and the first sheet of the new order. At the point where the last sheet in the final group of an order is shingled one of two processes may take place. The conveyors below the nip may be halted until the gap between the orders is closed and then restarted to create a new gap in accordance with the normal downstacker function for within-order group separation. Alternatively, the conveyors downstream of the nip may be accelerated thereby expanding the existing gap between orders and eliminating the need for the interrupt mechanism to accomplish group separation.

It is this alternative process, employed in some of defendants' machines during order change, that plaintiff asserts is newly discovered evidence, wrongfully concealed by defendants, justifying relief from judgment under rule 60(b).

MEMORANDUM

Rule 60(b) establishes the procedural framework for relieving a party from the effects of a final judgment. The rule strikes a balance between the interest in having legal rights fully litigated on their merits and the need for finality in litigation. The following portions of the rule are relevant:

On motion and upon such terms as are just, the court may relieve a party or a party's legal representative from a final judgment, order, or proceeding for the following reasons: (1) mistake, inadvertence, surprise, or excusable neglect; (2) newly discovered evidence which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b); (3) fraud (whether heretofore denominated intrinsic or extrinsic), misrepresentation, or other misconduct of an adverse party; ... or (6) any other reason justifying relief from the operation of the judgment. The motion shall be made within a reasonable time, and for reasons (1), (2), and (3) not more than one year after the judgment order or proceeding was entered or taken.

* * * * * *

This rule does not limit the power of the court to ... set aside a judgment for fraud upon the court.

Plaintiff asserts all of the above reasons, (1),(2),(3),(6) and fraud on the court, as bases to set aside the judgment.

Because the motion is untimely to the extent it is based on reasons (1), (2) and (3) and unjustified to the extent it is based on reason (6) or on fraud on the court, the motion must be denied.

Rule 60(b)(1),(2) and (3)

The one year limitations period applicable to reasons (1), (2) and (3) of rule 60(b) is jurisdictional and not subject to judicial extension. Wesco Products Co. v. Alloy Automotive Co. 880 F.2d 981, 985 (7th Cir.1989). Perhaps because the pending 60(b) motion was filed less than a month after entry of the final judgment of September 15, 1998, the parties did not believe it necessary to consider the jurisdictional timeliness of the motion. However, a review of the pending motion and the nature of the previous judgments leads to the inescapable conclusion that plaintiff is actually seeking relief from the final judgment of June 11, 1997 entered outside the jurisdictional limit.

Discovery in this matter was complete prior to the entry of the 1997 judgment. As a part of the 1997 judgment the Court considered the submissions of the parties based upon discovery then completed and determined the relevant functioning of the machines as a matter of undisputed fact. Based on these undisputed facts judgment was entered against plaintiff on all claims relating to both the '325 and '276 patents. The decision of the Federal Circuit left that judgment mostly intact, remanding only for the application of known facts to the '276 claims as construed by the Federal Circuit and then only as to the question of infringement under the doctrine of equivalents. The judgment of no literal infringement, grounded as it necessarily was in the undisputed facts, was expressly affirmed. Plaintiff expressly recognizes that facts now challenged were critical to both the 1997 judgment and its affirmance. Support Brief at 4. Those same facts were applied in rendering the 1998 judgment of non-infringement. The jurisdictional propriety of considering the merits of the pending motion depends on which judgment date is the appropriate measuring point for the one year limitation period. If the 1997 judgment is the measuring point the motion is untimely.

Several courts have considered the effect of a second judgment after remand on the filling of a 60(b) motion and have concluded that the initial judgment is the appropriate measuring date if the 60(b) challenge could have been made on the same basis against the original judgment. Moolenaar v. Government of Virgin Islands, 822 F.2d 1342 (3d Cir.1987). In Moolenaar the trial court entered a judgment reforming a lease for mutual mistake based on its conclusion that the parties never intended to include certain rent producing properties within the scope of the lease. The judgment was appealed, affirmed in part and remanded for a detrmination concerning the propriety of plaintiff's retention of previously collected rents from the excluded...