Mobile Shelter Sys. USA, Inc. v. Grate Pallet Solutions, LLC

• Decision Date: 14 January 2012
• Docket Number: Case No. 3:10–cv–978–J–37JBT.
• Citation: 845 F.Supp.2d 1241
• Parties: MOBILE SHELTER SYSTEMS USA, INC., Plaintiff, v. GRATE PALLET SOLUTIONS, LLC, and Thomas R. Buck, Defendants.
• Court: U.S. District Court — Middle District of Florida

845 F.Supp.2d 1241

MOBILE SHELTER SYSTEMS USA, INC., Plaintiff,

v.GRATE PALLET SOLUTIONS, LLC, and Thomas R. Buck, Defendants.

Case No. 3:10–cv–978–J–37JBT.

United States District Court,

M.D. Florida,

Jacksonville Division.

Jan. 14, 2012.

Brian R. Gilchrist, Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Orlando, FL, Chessa L. Akins, James D. Rosenblatt, The Rosenblatt Law Firm, PC, San Antonio, TX, Francis P. Remsen, Law Office of Frank P. Remsen, PA, Maitland, FL, Herbert L. Allen, Crystal T. Broughan, Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Jacksonville, FL, for Plaintiff.

Catrina Humphrey Markwalter, Tiffiny Douglas Safi, William G. Cooper, Cooper, Ridge & Safi, PA, Richard S. Vermut, Jacksonville, FL, Gerald Werfel, Pompan, Murray & Werfel, PLC, Alexandria, VA, for Defendants.

ORDER

ROY B. DALTON JR., District Judge.

This matter is before the Court on the following:

1. Defendants' Motion for Partial Summary Final Judgment on Plaintiff's Patent Infringement Claim (Doc. No. 74), filed October 6, 2011;

2. Defendants' Motion in Limine to Exclude Expert Testimony of Charles Benedict (Doc. No. 81), filed October 14, 2011; 3. Plaintiff's Motion for Partial Summary Judgment (Doc. No. 82), filed October 14, 2011;

4. Defendants' Motion for Summary Final Judgment (Doc. No. 83), filed October 14, 2011;

5. Defendants' Notice of Filing Exhibits in Support of Defendants' Motion for Summary Final Judgment (Doc. No. 84), filed October 14, 2011;

6. Defendants' Second Notice of Filing Exhibits in Support of Defendants' Motion for Summary Final Judgment (Doc. No. 85), filed October 14, 2011;

7. Defendants' Notice of Refiling Exhibits A and L in Support of Defendants' Motion for Summary Final Judgment (Doc. No. 86), filed October 17, 2011;

8. Defendants' Notice of Re-submission of Exhibit “5” to Motion in Limine to Exclude Expert Testimony of Charles Benedict (Doc. No. 87), filed October 17, 2011;

9. Plaintiff's Response to Defendants' Motion for Partial Summary Judgment on Plaintiff's Patent Infringement Claim (Doc. No. 88), filed October 20, 2011;

10. Defendants' Response to Plaintiff's Motion for Partial Summary Judgment (Doc. No. 91), filed October 27, 2011;

11. Plaintiff's Response to Defendants' Motion in Limine to Exclude Expert Testimony of Charles Benedict (Doc. No. 93), filed October 28, 2011;

12. Plaintiff's Motion to Strike Defendants' Summary Final Judgment Evidence (Doc. No. 94), filed October 28, 2011;

13. Plaintiff's Response to Defendants' Motion for Summary Final Judgment (Doc. No. 95), filed October 28, 2011;

14. Order to Show Cause (Doc. No. 97), issued November 1, 2011;

15. Defendants' Notice of Filing Document Under Seal (Doc. No. 98), filed November 2, 2011;

16. Defendants' Memorandum in Opposition to Plaintiff's Motion to Strike Defendants' Summary Final Judgment Evidence (Doc. No. 99), filed November 10, 2011; and

17. Plaintiff's Response to the Court's November 1, 2011 Order to Show Cause (Doc. No. 101), filed November 10, 2011.

I. BACKGROUND

The parties to this lawsuit manufacture shipping and storage systems for use by the U.S. military. The only purchaser of Plaintiff's and Defendants' systems is the U.S. military. These purchases are made in accordance with a complicated contracting scheme known as the Federal Acquisition Regulation (“FAR”) and the Defense Federal Acquisition Regulation Supplement (“DFARS”). In the most simplistic form, the purchasing process begins when the government agency, in this case the Defense Logistics Agency (“DLA”), responsible for procuring an item receives a request from one of its customers, which in this case were the U.S. Army and the U.S. Marine Corps. DLA then drafts a solicitation and advertises it on an internet website known as the DLA Internet Bid Board System (“DIBBS”). Potential bidders use DIBBS to review advertised solicitations and requests, and also to submit quotes and bids. DLA then evaluates the submitted quotes or bids and may enter into a contract based upon the submissions.

In 2006, DLA advertised a solicitation for metal shipping and storage containers. (Doc. No. 84–4, November 8, 2010 Affidavit of Thomas R. Buck (hereinafter “Buck Aff.”), at ¶ 6; Doc. No. 85–1, September 28, 2011 Deposition of Joseph McHenry (hereinafter “McHenry Dep.”), at 98:20–23.) In connection with the solicitation, the U.S. Marines held a pre-proposal conference at which interested businesses could seek information regarding the solicitation in Jacksonville, Florida. (Buck Aff., ¶ 7.) Defendant Thomas R. Buck attended the conference. ( Id.) In response to the solicitation, Buck started operating Defendant Grate Pallet Solutions, LLC (“GPS”), a Florida Limited Liability Company which had, until this time, been inactive. ( Id.) GPS submitted a single storage system designed to store vehicles to the Marines for testing in connection with the 2006 solicitation. ( Id. at ¶ 8.) The testing was successful, and GPS was ultimately awarded two contracts to supply such systems. (Buck Aff., ¶¶ 8, 11.) A third company, which is not a party to this lawsuit, was awarded a contract to supply the majority of the storage systems purchased as the result of the 2006 solicitation. ( Id. ¶ 10.) Plaintiff was aware GPS was in contact with DLA regarding the 2006 solicitation, and even discussed a potential joint bid with GPS to produce the products requested. ( Id. ¶ 14.)

Four years later, in 2010, DLA advertised another solicitation for the U.S. Army for metal shipping and storage containers. ( Id. ¶ 19.) The 2010 solicitation, however, identified the shipping and storage systems manufactured by Plaintiff Mobile Shelter Systems USA, Inc. as the items that the government sought to purchase. (McHenry Dep. 50:10–14.) The solicitation also indicated that DLA would accept offers from manufacturers other than Plaintiff if such offers were accompanied by sufficient information for DLA to determine the products were acceptable alternatives to Plaintiff's products. ( Id. at 49:4 to 50:19.)

GPS prepared a response to DLA's 2010 solicitation, which is referred to as a protest,¹ and offered to fill the request by producing alternative products. ( Id. ¶ 19.) DLA evaluated GPS's protest and determined that GPS's proposed storage systems were acceptable alternative products to Plaintiff's products. (McHenry Dep. 68:15 to 69:24.) DLA then issued an amended solicitation which, among other things, noted that GPS's products were acceptable alternatives to Plaintiff's products. ( Id.) Although quotes were submitted in response to the amended solicitation, DLA has not awarded any contracts in connection with it. ( Id. 66:7–24.)

Plaintiff responded to GPS's protest by bringing this lawsuit and moving for a temporary restraining order (“TRO”) to enjoin Defendants from bidding on any government solicitations issued by the military. (Doc. Nos. 1,2, 7, and 8.) In its Complaint, Plaintiff asserted fraud, trade dress infringement, tortious interference, and breach of contract claims against Defendants. (Doc. No. 1.) The Court declined to grant Plaintiff's TRO request and ultimately denied Plaintiff's Motion for a Preliminary Injunction. (Doc. Nos. 11, 27.) At the hearing on the motion for a TRO, and in its supporting briefs, Plaintiff attempted to buttress its request by referencing its intent to bring a patent infringement claim against Defendants. The Court found such arguments unpersuasive as Plaintiff had not yet asserted a patent infringement claim against Defendants. (Doc. No. 11, p. 7.)

The Court issued a Case Management and Scheduling Order on January 4, 2011. (Doc. No. 32.) Among other things, the order set June 10, 2011, as the deadline to amend the pleadings; June 30, 2011 as the deadline for the disclosure of expert reports; and September 9, 2011, as the deadline for all discovery. ( Id.) After the case was assigned to the undersigned District Judge, the scheduling order was amended. (Doc. No. 38.) The discovery deadlines were not changed in the amended scheduling order. ( Id.) Rather, the Court reset the trial term, adjusted the date of the pretrial conference, and modified the deadlines for mediation and for the filing of Daubert and dispositive motions. ( Id.)

The Magistrate Judge extended the deadline to amend the pleadings on June 2, 2011, in response to briefing on a discovery issue in which Plaintiff acknowledged that it failed to plead a claim for trade dress infringement with the proper clarity. (Doc. No. 40, citing Doc. No. 36, p. 3 n. 1.) Plaintiff thereafter moved to amend its complaint to clarify its trade dress claim. (Doc. No. 41.) The Magistrate Judge granted leave to amend, and Plaintiff's Second Amended Complaint was deemed filed on June 20, 2011. (Doc. No. 42.) Plaintiff's claims in its Second Amended Complaint were roughly the same as those in its previous complaints, which (once again) did not include a claim for patent infringement. (Doc. No. 43.)

Shortly thereafter, three days before the disclosure deadline, the parties jointly moved to extend the time for the disclosure of experts. (Doc. No. 44.) The Magistrate Judge granted the Motion and ordered Plaintiff to disclose its experts no later than August 1, 2011. (Doc. No. 45.) Plaintiff's expert, Dr. Benedict, inspected GPS's products on July 14, 2011. (Doc. No. 47, p. 2.) Over two weeks after this inspection, Plaintiff sought leave to amend its complaint to add a claim of patent infringement. ( Id.)

Plaintiff disclosed the expert report of Dr. Charles Benedict on August 1, 2011. (Doc. No. 81, p. 2.) The very first sentence of Dr. Benedict's report, which consisted of less than a page of analysis, states that the report contained his “preliminary opinion.” (Doc. No. 81–1.) On August 15, Plaintiff moved to compel a second inspection of Defendants' products based on Defendants' alleged misconduct during the inspection in July. (Doc. No. 49.) Plaintiff withdrew this motion before it was ripe for adjudication. (...