Probatter Sports, LLC v. Joyner Technologies, Inc.

• Decision Date: 03 November 2006
• Docket Number: No. 05-CV-2045-LRR.,05-CV-2045-LRR.
• Citation: 463 F.Supp.2d 949
• Parties: PROBATTER SPORTS, LLC, Plaintiff/Counterclaim-Defendant, v. JOYNER TECHNOLOGIES, INC., Defendant/Counterclaim-Plaintiff.
• Court: U.S. District Court — Northern District of Iowa

463 F.Supp.2d 949

PROBATTER SPORTS, LLC, Plaintiff/Counterclaim-Defendant, v. JOYNER TECHNOLOGIES, INC., Defendant/Counterclaim-Plaintiff.

No. 05-CV-2045-LRR.

United States District Court, N.D. Iowa, Eastern Division.

November 3, 2006.

Stephen J. Holtman, Simmons Perrine Albright Ellwood, Cedar Rapids, IA, Susan M. Schlesinger, Grimes & Battersby, LLP, Norwalk, CT, for Plaintiff/Counterclaim-Defendant.

James S. Zmuda, Califf & Harper, Moline, IL, John C. McNett, Quentin G. Cantrell, Woodard, Emhardt, Moriarty, McNett & Henry, LLP, Indianapolis, IN, for Defendant/Counterclaim-Plaintiff.

ORDER

READE, District Judge.

                TABLE OF CONTENTS
                I.  INTRODUCTION ...................................................951
                 II.  RELEVANT PRIOR PROCEEDINGS .....................................951
                III.  BACKGROUND .....................................................951
                      A. Iowa Lawsuit ................................................951
                      B. Connecticut Lawsuit .........................................952
                      C. Customer Lawsuits ...........................................952
                

                IV.  JURISDICTION ...................................................953
                  V.  ANTISUIT INJUNCTION ............................................953
                      A. Arguments ...................................................953
                         1. Joyner's arguments .......................................953
                         2. ProBatter's arguments ....................................953
                      B. Choice of Law ...............................................954
                      C. Analysis ....................................................955
                 VI. BOND ............................................................957
                VII. CONCLUSION ......................................................958
                

I. INTRODUCTION

Before the court is the Motion to Enjoin ProBatter's Recent Suits Against Joyner's Customers ("Motion") (docket no. 96), filed by Defendant/Counterclaim-Plaintiff Joyner Technologies, Inc. ("Joyner").

II. RELEVANT PRIOR PROCEEDINGS

On October 19, 2006, Joyner filed the Motion. On October 30, 2006, Plaintiff/Counterclaim-Defendant ProBatter Sports, LLC ("ProBatter") filed a Resistance. On November 2, 2006, Joyner filed a Reply.

III. BACKGROUND

A. Iowa Lawsuit

On May 17, 2005, ProBatter filed a Complaint in this court against Joyner Technologies, Inc. ("Iowa Lawsuit"). The Iowa Lawsuit concerns two patents, the "'134 Patent"¹ and the "'512 Patent,"² which ProBatter holds on the ProBatter Simulator.³ ProBatter alleges that "Joyner has created, is selling and has sold to ... [the University of Northern Iowa (`UNI')<sup>4</sup> ], a video pitching display system referred to as the `ALLSTAR PRO 5000[.]'" Complaint (docket no. 1-1), at ¶ 13. The ALLSTAR PRO 5000 "is adapted to be used in conjunction with a HomePlate programmable pitching machine [ (`HomePlate') ] marketed by Sports Tutor, Inc. [ (`Sports Tutor') ]." Id.

ProBatter's Complaint contains three causes of action. First, ProBatter alleges that Joyner is contributorily infringing and actively inducing the infringement of the '134 Patent and the '512 Patent, in violation of 35 U.S.C. § 271(b) and (c). Second, ProBatter alleges that Joyner has literally infringed the same two patents, in violation of 35 U.S.C. § 271(a). Third, ProBatter alleges that Joyner's actions "constitute unfair competition and an unfair trade practice under the common law." ProBatter seeks injunctive relief, compensatory damages, punitive damages, attorneys' fees and costs.

Joyner denies the substance of ProBatter's Complaint and asserts eleven affirmative defenses. In Count I of its Second Amended Counterclaim,⁵ Joyner seeks a declaratory judgment of non-infringement, invalidity and unenforceability of the '134 Patent and the '512 Patent. In Counts II and III, Joyner alleges common law unfair competition and abuse of process.

Since February of 2006, the court has ruled on a number of substantive motions.⁶ The parties have conducted settlement negotiations, and discovery is now underway. A claim construction ("Markman") hearing is set for May 7, 2007. Trial is set for the two-week period beginning on October 15, 2007.

B. Connecticut Lawsuit

On December 28, 2005, ProBatter sued Sports Tutor in the United States District Court for the District Court of Connecticut ("Connecticut Lawsuit"). In the Connecticut Lawsuit, ProBatter alleges that Sports Tutor infringed two other patents that ProBatter holds on the ProBatter Simulator by marketing and selling HomePlate.

On February 2, 2006, Sports Tutor filed a Motion to Intervene in the Iowa Lawsuit. On March 10, 2006, the magistrate judge denied the Motion to Intervene. See generally ProBatter Sports, LLC v. Joyner Techs., Inc., No. 05-CV-2045-LRR, 2006 WL 625874 (N.D.Iowa Mar. 10, 2006). The magistrate judge made clear, however, that he was not resolving whether the court could exercise jurisdiction over the two patents at issue in the Connecticut Lawsuit. See id. at *4 (discussing the possibility that the district court might retain jurisdiction over the two other patents). Sports Tutor did not appeal the magistrate judge's order to the district court pursuant to Federal Rule of Civil Procedure 72.

A motion is pending in the Connecticut Lawsuit to transfer the Connecticut Lawsuit to the Northern District of Iowa for consolidation with the Iowa Lawsuit.

C. Customer Lawsuits

Beginning on October 5, 2006, ProBatter filed five lawsuits (collectively, the "Customer Lawsuits") against Joyner's customers. See ProBatter Sports, LLC v. Big League Edge, LLC, 06-CV-1449-CMP (W.D.Wash. Oct. 5, 2006); ProBatter Sports, LLC v. Up to Bat West, LLC, 06-CV-02425-SO (N.D.Ohio Oct. 6, 2006); ProBatter Sports, LLC v. John Doe Corp. and Chris Mastoridis, 06-CV-05463-ADS-ARL (E.D.N.Y. Oct. 10, 2006); ProBatter Sports, LLC v. Doctor Yeager's Baseball Academy, LLC, No. 2:2006cv07840-LMA-DEK (E.D.La. Oct. 11, 2006); ProBatter Sports, LLC v. Frozen Ropes New Orleans — N. Shore, LLC, No. 2:2006cv07841-MVL-SS (E.D.La. Oct. 11, 2006). In each of the Customer Lawsuits, ProBatter alleges that one of Joyner's customers has literally infringed the '134 Patent and the '512 Patent by using the ALLSTAR PRO 5000 in combination with a HomePlate pitching machine, in violation of 35 U.S.C. § 271(a).

IV. JURISDICTION

The court has original jurisdiction of civil actions "arising under any Act of Congress relating to patents." 28 U.S.C. § 1338(a). It also has jurisdiction over related claims for unfair competition. Id. § 1338(b). ProBatter's Complaint and Joyner's Second Amended Counterclaim raise various claims of patent infringement, in violation of 35 U.S.C. § 271, and common law unfair competition. Therefore, the court has subject-matter jurisdiction pursuant to § 1338(a) and (b).

V. ANTISUIT INJUNCTION

A. Arguments

1. Joyner's arguments

Joyner asks the court to enjoin ProBatter from prosecuting the Customer Lawsuits, as well any other lawsuits against its customers based on the '134 Patent or the '512 Patent, during the pendency of the Iowa Lawsuit. ProBatter resists Joyner's request for an antisuit injunction.

Relying in part on Katz v. Lear Siegler, Inc., 909 F.2d 1459 (Fed.Cir.1990), Joyner maintains that the court should issue an antisuit injunction because (1) the real parties in interest in the Iowa Lawsuit and the Customer Lawsuits are the same and (2) the fighting issues in the Iowa Lawsuit and the Customer Lawsuits are the same. Joyner contends that it is the real defendant in interest in all of the Customer Lawsuits, because it has agreed to indemnify its customers. Joyner represents that the fighting issues in the Customer Lawsuits are whether Joyner's ALLSTAR PRO 5000 product infringes either the '134 Patent or the '512 Patent. Because the parties and the issues are the same, allowing the Customer Lawsuits to proceed would waste judicial resources. Joyner points out that the Iowa Lawsuit is the first-filed "manufacturer" action and, therefore, should take priority over all subsequently filed "customer" lawsuits.

Joyner further opines that ProBatter brought the Customer Lawsuits in bad faith, in order to (1) intimidate Joyner's customers, (2) increase Joyner's litigation costs and (3) unnecessarily burden Joyner "with multiple indemnification obligations for pointless, redundant litigations." Brief in Support of Motion (docket no. 96-2), at 2. Joyner also claims that the Customer Lawsuits are an attempt by ProBatter at an "end run" around the court's recent decision to deny one of ProBatter's attorneys access to Joyner's trade secrets. Id. (referencing ProBatter Sports, LLC v. Joyner Techs., Inc., 2006 U.S. Dist. LEIS 74218 (Oct. 11, 2006) (docket no. 91)). Joyner opines that ProBatter will not suffer any prejudice if an antisuit injunction is issued, because the statute of limitations in patent cases is six years and the Iowa Lawsuit is well underway.

2. ProBatter's arguments

According to ProBatter, equity demands that it be permitted to protect and enforce its patent rights against all infringers, including Joyner's customers. Relying in part on Kryptok Co. v. Stead Lens Co., 190 F. 767, 769 (8th Cir.1911), ProBatter proffers eleven reasons why an antisuit injunction should not issue: (1) the customers are not parties in the Iowa Lawsuit; (2) ProBatter will suffer irreparable harm if it is not allowed to immediately proceed with the lawsuits, because the defendants are "all batting cages, which are notoriously under funded [and] likely go out of business when later confronted with liability," Resistance (docket no. 101-1), at 3; (3) a six-year statute of limitations is "of no use ... if Joyner's customers are allowed to continue to infringe ProBatter's patents in the meantime and then go out of business," id.; (4) Joyner is a "family business" and, if ProBatter wins this lawsuit, "Joyner will no longer be in a position to satisfy any judgment against it," id. at 3-4; (5) Joyner has not proven that it has an indemnity...