Romag Fasteners, Inc. v. Fossil, Inc.

• Decision Date: 24 October 2013
• Docket Number: Civil Action No. 10–01827–WGY.
• Citation: 979 F.Supp.2d 264
• Court: U.S. District Court — District of Connecticut
• Parties: ROMAG FASTENERS, INC., Plaintiff, v. FOSSIL, INC., Fossil Stores I, Inc., Macy's, Inc., and Macy's Retail Holdings, Inc., Defendants, Romag Fasteners, Inc., v. Dillard's, Inc., Nordstrom, Inc., The Bon–Ton Stores, Inc., The Bon–Ton Department Stores, Inc., Belk, Inc., Zappos.Com, Inc., and Zappos Retail, Inc., Defendants.

979 F.Supp.2d 264

ROMAG FASTENERS, INC., Plaintiff,

v.FOSSIL, INC., Fossil Stores I, Inc., Macy's, Inc., and Macy's Retail Holdings, Inc., Defendants,

Romag Fasteners, Inc.,

v.Dillard's, Inc., Nordstrom, Inc., The Bon–Ton Stores, Inc., The Bon–Ton Department Stores, Inc., Belk, Inc., Zappos.Com, Inc., and Zappos Retail, Inc., Defendants.

Civil Action No. 10–01827–WGY.

United States District Court,

D. Connecticut.

Oct. 24, 2013.

Brian P. Daniels, David R. Schaefer, Sean M. Fisher, Brenner, Saltzman & Wallman, New Haven, CT, Norman H. Zivin, Tonia A. Sayour, Cooper & Dunham, LLP, New York, NY, for Plaintiff.

Brian W. Brokate, Jeffrey E. Dupler, Gibney, Anthony & Flaherty, LLP, Lauren S. Albert, The Law Offices of Lauren S. Albert, New York, NY, Matthew J. Becker, Actavis, Elizabeth, NJ, Francis H. Morrison, III, Jonathan A. Harris, Axinn, Veltrop & Harkrider LLP, William J. Cass, Cantor Colburn LLP, Hartford, CT, for Defendants.

MEMORANDUM & ORDER

WILLIAM G. YOUNG ^*, District Judge.

I. INTRODUCTION

The instant case raises patent and trademark issues involving magnetic snap fasteners on handbags and other leather accessories.

The plaintiff Romag Fasteners, Inc. (“Romag”) designs, causes to be manufactured, and sells magnetic snap fasteners used in handbags and other accessories. Compl. ¶ 8, ECF No. 1. Romag holds U.S. Patent No. 5,722,126 (the “'126 patent”). Compl., Ex. A, U.S. Patent, ECF No. 1. The '126 patent was issued on March 3, 1998 for an invention by Howard J. Reiter entitled “Magnetic Snap Fasteners.” Id.; Compl. ¶ 7. Romag also owns a U.S. Trademark Registration No. 2,095,367 (the “'367 registration”). Compl., Ex. B, Trademark Principal Register, ECF No. 1. The '367 registration covers the mark “ROMAG” in connection with magnetic snap fasteners. Compl. ¶ 10.

Romag sued Fossil, Inc. and Fossil Stores I, Inc. (collectively “Fossil”), and Macy's, Inc. and Macy's Retail Holdings, Inc. (collectively “Macy's”). In a separate action, Romag sued Dillard's, Inc., Nordstrom, Inc., The Bon–Ton Stores, Inc., The Bon–Ton Department Stores, Inc., Belk, Inc., Zappos.com, Inc., and Zappos Retail, Inc. (altogether “the defendants”). See Mot. Consolidate Enter Consol. Case Mgm't Plan, ECF No. 81. The Court consolidated these two actions for patent infringement, trademark infringement, false designation of origin, and unfair competition. Order, ECF No. 82. Romag alleges inter alia that the defendants infringe the '126 patent “by making, using, importing, selling[,] and offering for sale handbags, ... containing magnetic snap fasteners which come within the claims of the '126 Patent,” Compl. ¶ 26, and that the “defendants knowingly adopted and used the name and mark of ROMAG,” id. ¶ 30, when selling certain handbags (the “Fossil Handbags”) with snap fasteners, “bearing a reproduction, counterfeit, copy, or colorable imitation of the trademark ROMAG,” id. ¶ 32.

The defendants move for partial summary judgment, declaring that Romag is not entitled to any of the defendants' profits as a remedy for the alleged trademark infringement. Fossil and Macy's, the original defendants to this action, seek to have the Court declare the '126 patent invalid due to the alleged indefiniteness of the term “rotatable,” the sole object of claim construction at a previous Markman Hearing. This Court denied both motions on April 18, 2013. Minute Entry, ECF No. 243. This memorandum explains the reasoning behind that order.

A. Procedural Posture

Romag commenced this action against the defendants on November 22, 2010. Compl.

On November 23, 2010, Romag filed a motion for temporary restraining order and preliminary injunction, seeking to enjoin the defendants' sale of handbags with counterfeit Romag magnetic snap fasteners and use of Romag's trademark, Pl.'s Mot. TRO & Prelim. Inj. 1, ECF No. 10, and Judge Droney granted a temporary restraining order on November 30, 2010, Ruling Mot. TRO, ECF No. 20. Judge Droney extended the temporary restraining order upon a consent motion through January 6, 2011. Consented Mot. Extend Duration Court's TRO Dated Nov. 30, 2010, ECF No. 29; Order Granting Mot. Extend TRO, ECF No. 30. On December 22, 2010, the parties agreed and stipulated to converting the temporary restraining order into a preliminary injunction until final judgment is reached, Stipulation & Order Converting TRO Into Prelim. Inj. Through Final J. 1, ECF No. 38, and Judge Droney approved this stipulation on December 29, 2010, Order Approving Stipulation, ECF No. 39.

Fossil and Macy's filed an answer, including affirmative defenses, and Fossil counterclaimed, seeking a declaratory judgment of noninfringement (“first counterclaim”), a declaratory judgment of invalidity (“second counterclaim”), and false patent marking (“third counterclaim”), on December 15, 2010. Defs. Fossil Inc., Fossil Stores I, Inc., Macy's, Inc., & Macy's Retail Holdings, Inc.'s Answer, Affirmative Defenses & Defs. Fossil Inc. & Fossil Stores I, Inc.'s Countercls., ECF No. 31. Romag filed an answer to Fossil's counterclaims on February 4, 2011. Pl.'s Reply Countercls., ECF No. 53.

After a motion by Romag on September 30, 2011, Judge Droney consolidated this action with a second case Romag had pending before this court, Romag Fasteners, Inc. v. Dillard's, Inc., et al., No. 3:11CV929(CFD). Mot. Consolidate & Enter Consol. Case Mgmt. Plan, ECF No. 81; Order Granting Mot. Consolidate Cases & Enter Consol. Case Mgmt. Plan, ECF No. 82; Notice Consol., ECF No. 83.

On October 12, 2011, the parties stipulated to the dismissal of Fossil's third counterclaim (false patent marking), and Judge Droney approved the dismissal on October 13, 2011. Stipulation & [Proposed] Order Dismissing Defs.' Third Countercl. False Patent Marking, ECF No. 85; Order Approving Stipulation & Ordering Dismissal, ECF No. 86.

The parties submitted claim construction briefs, and requested a Markman ruling from the Court, on December 21, 2011. Pl.'s Cl. Constr. Br., ECF No. 97; Defs.' Opening Cl. Constr. Br., ECF No. 98. Claim construction reply briefs were filed on January 27, 2012. Defs.' Reply Cl. Constr. Br., ECF No. 103; Pl.'s Opp'n Cl. Constr. Br., ECF No. 104.

On September 19, 2012, the defendants moved for partial summary judgment as to whether Romag was entitled to the defendants' profits. Defs.' Mot. Partial Summ. J. Declaring Matter Law PL Not Entitled Any Defs.' Profits (“Defs.' Profits Mot.”), ECF No. 153; Defs.' Mem. Law Supp. Mot. Partial Summ. J. Declaring Matter Law Pl. Not Entitled Defs.' Profits (“Defs.' Profits Mem. Supp.”), ECF No. 153–1. Furthermore, Fossil and Macy's moved for partial summary judgment on patent invalidity. Defs.' Mot. Partial Summ. J. Declaring Patent Invalid (“Patent Invalidity Mot.”), ECF No. 154; Defs.' Mem. Law Supp. Mot. Partial Summ. J. Declaring Patent Invalid (“Patent Invalidity Mem. Supp.”), ECF No. 154–1. The defendants further submitted a statement of such facts as deemed material to their summary judgment motion ¹, Defs.' Local Rule 56(a)1 Statement Supp. Mots. Partial Summ. J. Appropriate Measure Recoverable Damages & Indefiniteness (“Statement Mat. Facts”), ECF No. 164, as well as an affidavit of Defendants' counsel, Nicholas A. Geiger, in support of Defendants' motions for partial summary judgment and statement of material facts, Decl. Nicholas A. Geiger Supp. Defs.' Mots. Summ. J. (“Geiger Decl.”), ECF No. 156, & Exs. 1–16, ECF Nos. 156–1 to 156–16.

On November 2, 2012, Romag submitted its memoranda in opposition to the defendants' motions for partial summary judgment, including a statement of facts, and declaration of Sean M. Fisher, Romag's attorney, and attached exhibits. Pl.'s Mem. Opp'n Defs.' Mot. Summ. J. Issue Patent Invalidity (“Opp'n Patent Invalidity”), ECF No. 183; Pl.'s Opp'n Defs.' Mot. Summ. J. Damages (“Opp'n Damages”), ECF No. 184; Pl.'s L.R. 56(a)(2) Statement, (“Statement Mat. Facts Romag”), ECF No. 186; Decl. Sean M. Fisher (“Fisher Decl.”), ECF No. 187, & Exs. 1–13, ECF Nos. 187–1 to 187–13.

The defendants replied on November 30, 2012. Reply Mem. Law Further Supp. Mot. Partial Summ. J. Declaring Matter Law PL Not Entitled Any Defs. Profits, ECF No. 208; Reply Mem. Law Further Supp. Defs. Mot. Partial Summ. J. Declaring Patent Invalid, ECF No. 209.

On January 15, 2013, this case was transferred to this session as a Visiting Judge. Order Transfer Jan. 15, 2013, ECF No. 222.

The Court held a Markman Hearing on April 9, 2013, and construed the term “rotatable.” Minute Entry Markman Hearing Apr. 9, 2013, ECF No. 231.

The Court heard argument on the two motions for partial summary judgment on April 18, 2013, and promptly entered an oral order denying both motions. Minute Entry Motion Hearing Apr. 18, 2013, ECF No. 243. This memorandum explains that order.

B. Factual Background

Romag is a Connecticut corporation that designs, causes to be manufactured, and sells magnetic snap fasteners, including embodiments of the '126 patent, which were designed for use on handbags and other accessories. Compl. ¶¶ 2, 8. Fossil is a Delaware corporation with headquarters in Richardson, Texas. Statement Mat. Facts Romag ¶ 9. Fossil is a designer of consumer fashion accessories, including handbags and small leather goods, and sells these fashion accessories in its own retail stores, on its website, and inter alia to retailers Macy's, Dillard's, Inc., Nordstrom, Inc., The Bon–Ton Stores, Inc., The Bon–Ton Department Stores, Inc., Belk, Inc., Zappos.com, Inc., and Zappos Retail, Inc. (together the “Retailer Defendants”). Id. ¶¶ 9, 11. The Retailer Defendants, with the exception of Zappos, are department stores which purchased the Fossil Handbags from Fossil to resell to consumers. Id. ¶ 11.

The '126 patent was issued to Romag as assignee of Howard J. Reiter, the inventor of the patent, for an invention entitled “Magnetic Snap Fasteners” on March 3, 1998. Compl. ¶ 7; '126 patent. Romag also registered the mark “ROMAG” (the “ROMAG” mark) for magnetic...