Wills v. Rothman

• Decision Date: 16 May 2012
• Docket Number: Civil Action No. 10-3078 (JAP)
• Court: U.S. District Court — District of New Jersey
• Parties: WILLS, O'NEILL & MELLK, Plaintiff, v. LINE ROTHMAN and GLAMOURMOM, LLC Defendants/Counter Third-Party Plaintiffs/Third-Party Plaintiffs, WILLS, O'NEILL & MELLK, ARNOLD M. MELLK, ESQ., ALAN G. JACOBSON, ESQ., JOHN F. SWEENEY, ESQ., and EVELYN G. HEILBRUNN, ESQ. Defendants on the Counterclaim/ Third-Party Defendants.

WILLS, O'NEILL & MELLK, Plaintiff,
v.
LINE ROTHMAN and GLAMOURMOM,
LLC Defendants/Counter Third-Party Plaintiffs/Third-Party Plaintiffs,
WILLS, O'NEILL & MELLK, ARNOLD M. MELLK, ESQ.,
ALAN G. JACOBSON, ESQ., JOHN F. SWEENEY, ESQ.,
and EVELYN G. HEILBRUNN, ESQ. Defendants on the Counterclaim/ Third-Party Defendants.

Civil Action No. 10-3078 (JAP)

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY

Dated: May 16, 2012

NOT FOR PUBLICATION

MEMORANDUM OPINION

PISANO, Judge

This matter comes before the Court upon Third-Party Defendants Wills, O'Neill & Mellk, Arnold M. Mellk, Allan Jacobson, John F. Sweeney, and Evelyn G. Heilbrunn's (collectively "Defendants") Motion for Summary Judgment dismissing the Third-Party Complaint of Third-Party Plaintiffs Line Rothman and Glamourmom, LLC (collectively "Plaintiffs"). (DE 39, 40, 41.) Plaintiffs oppose the motion. (DE 51.) The Court has considered the parties' submissions and decided the matter without oral argument pursuant to Federal Rule of Civil Procedure 78. For the reasons set forth below, the Court will grant the Motion for

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Summary Judgment dismissing Counts One and Two of the Third-Party Complaint, and the Court will decline to exercise supplemental jurisdiction over the remaining state law claims.

I. BACKGROUND

A. Procurement of the Patent

Line Rothman developed an idea to make a nursing tank top in March 2000. (Defs.' Statement of Material Facts Not in Dispute ¶ 1; DE 41-8 (hereinafter "Defs. SMF").) After giving birth to her first child, Mrs. Rothman found the market lacked a garment that could conceal her stomach but also provide easy nursing access and full breast support. (Id. at ¶ 2.) She created a tank top with a built-in bra that opens with a snap to release the soft cup for nursing. (Id. at ¶ 7.) Mrs. Rothman put together a prototype of her garment in her family kitchen by stitching an Olga nursing bra into a Jockey tank top together with additional fabric, fasteners, and other sewing materials. (Id. at ¶¶ 4, 5.) She then contacted a patent attorney, Allan Jacobson, for assistance in securing patent protection for her nursing garment. (Id. at ¶ 8.)

Mr. Jacobson filed a provisional patent application on behalf of Mrs. Rothman on October 6, 2000 and thereafter filed a PCT patent application on October 3, 2001 claiming the nursing garment. (Id. at ¶ 9.) In the patent application, which issued as U.S. Patent No. 6,855,029 ("'029 patent"), Mr. Jacobson listed numerous prior art patents that covered a variety of nursing bras and nursing garments. (Id. at ¶ 10.) Included in the disclosure were U.S. Patent No. 4,648,404 to Clark ("Clark patent") covering a coordinated nursing slip and bra and U.S. Patent No. 6,282,719 to Vera ("Vera patent") covering a maternity-nursing nightgown. (See '029 patent, References Cited.)

In the meantime, Mrs. Rothman and her husband formed Glamourmom, LLC to produce, market, and sell her nursing garment. (Defs. SMF ¶ 13.) To that end, Mrs. Rothman contacted

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and sent a sample of her garment along with the published PCT patent application to apparel manufacturer Leading Lady in the summer of 2002. (Id. at ¶¶ 14, 15.) In March 2003, Mrs. Rothman entered into licensing negotiations with Leading Lady. (Id. at ¶ 16.) On July 14, 2003, Mr. Jacobson forwarded to Leading Lady a copy the U.S. Patent and Trademark ("PTO") examiner's preliminary rejection of Mrs. Rothman's application. (Id. at ¶ 18.) The following day, Leading Lady sent Mr. Jacobson a garment identified as "JC Penney sport nursing bra," which corresponded to Leading Lady style 438. (Id. at ¶ 19.) Mr. Jacobson examined the garment but sent it back to Leading Lady with a note calling the garment a "prior sports bra product," and disputing any relevance it had to Mrs. Rothman's patent application. (Id. at ¶¶ 19, 24, 25.) Leading Lady sent Mr. Jacobson a letter on July 28, 2003 terminating licensing negotiations and informing Mr. Jacobson that Leading Lady intended to market its own nursing tank top garment, designated as Leading Lady style 460. (Id. at ¶¶ 21, 22; see also Rothman v. Target Corp., 556 F.3d 1310, 1325-26 (Fed. Cir. 2009).)

In light of Leading Lady's plan to market a nursing tank top, Mr. Jacobson filed a "Petition to Make Special" with the PTO to expedite review of Mrs. Rothman's patent application. (Id. at ¶ 26.) Mr. Jacobson included the correspondence from Leading Lady but did not report Leading Lady styles 438 or 460 as prior art. Rothman, 556 F.3d at 1325. The '029 patent issued on February 15, 2005. (Defs. SMF ¶ 30.)

B. District Court Proceedings

Mrs. Rothman, through counsel Arnold M. Mellk of the law firm Wills, O'Neill & Mellk (collectively "Mellk Defendants") and Mr. Jacobson serving as "of counsel," filed a lawsuit in the U.S. District Court for the District of New Jersey on October 7, 2005 alleging infringement of the '029 patent by Target, Corp., Motherwear International, Kohl's Department Stores, Inc.,

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Motherswork, Inc., Federated Department Stores, Macy's Department Stores, Inc., Amazon.com, Inc., J.C. Penney Company, Inc., K-Mart Corp., Redcats USA, L.P., Elizabeth Lange, LLC, and Sears Holding Corp. ("Underlying Litigation"). (Id. at ¶ 31.) The defendant companies in the Underlying Litigation denied infringement and countered that the '029 patent was anticipated, obvious, unenforceable due to inequitable conduct, and that there had been prior inventorship by Haidee Johnstone, an employee of Leading Lady. See Rothman, 556 F.3d at 1316.

The district court held a Markman hearing on January 22, 2007, (Defs. SMF ¶ 34), and during the hearing, both sides agreed to certain discovery deadlines and an early May 2007 trial date. (McCallion Decl., Ex. 11 at 27; DE 47-2.) The court entered an opinion and order construing the disputed terms of the '029 patent on March 5, 2007. (Defs. SMF ¶ 35.) After the Markman opinion and order were issued, neither the Mellk Defendants nor Mr. Jacobson moved the district court "for a final comprehensive Markman order." (Pls.' Supp. Counterstatement of Material Facts Not in Dispute ¶ 7; DE 53.)

In March 2007, Plaintiffs retained Cowan, Leibowitz, & Latman, P.C. ("Cowan Firm") to serve as lead counsel. (Defs. SMF ¶ 36.) The Cowan Firm filed an amended complaint naming Glamourmom, LLC as a plaintiff in addition to Mrs. Rothman and obtained an adjournment of the trial until October 2007. (Id. at ¶¶ 37, 38.) But in September of 2007, the Cowan Firm withdrew as counsel, and John F. Sweeney and Evelyn G. Heilbrunn, both of the law firm Morgan & Finnegan, LLP, entered an appearance on behalf of Plaintiffs. (Id. at ¶¶ 39, 40.)

A ten-day trial of the Underlying Litigation was conducted before Chief Judge Garrett E. Brown, Jr. ending on November 2, 2007. (Id. at ¶ 41.) During the trial, the defendant companies offered the expert testimony of Walter Burzynski on the issue of validity and elicited testimony from Ms. Johnstone as a person of ordinary skill in the art. (Id. at ¶¶ 43, 44.) Plaintiffs did not

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offer an expert witness on the issue of validity. In conducting a cross-examination of Mr. Burzynski, Mr. Sweeney elicited testimony that he (Mr. Burzynski) had not thought of or appreciated the need for a tank top garment with an inner nursing feature. Rothman, 556 F.3d at 1317. The jury returned a verdict concluding that all defendant companies except one infringed the '029 patent, but that the '029 patent was invalid as anticipated and obvious. In particular, the jury found that the '029 patent was anticipated by the Clark patent, Vera patent, Leading Lady garment style 438, and Leading Lady garment style 460. (McCallion Decl., Ex. 28; DE 47-8.) The jury also found that Ms. Johnstone had invented the subject matter of the '029 patent before Mrs. Rothman and that the '029 patent was unenforceable due to Mr. Jacobson's inequitable conduct before the PTO. (Id.) After trial, Plaintiffs filed several motions for judgment as a matter of law. (Defs. SMF ¶ 51.) In its motion on the issue of obviousness, Plaintiffs' attorneys argued, among other things, that the defendant companies' expert Mr. Burzynski "admitted" that the '029 patent was nonobvious because it was not "imaginable" to him. Rothman v. Target Corp., Civ. No. 05-4829, 2008 WL 1844284, at *3 (D.N.J., April 23, 2008). But each motion for judgment as a matter of law was denied, and the district court awarded costs and fees to the defendant companies. Rothman, 556 F.3d at 1316.

C. Federal Circuit Proceedings

Plaintiffs appealed the denial of their motions to the Court of Appeals for the Federal Circuit. (Galligan Cert., Ex. M; DE 41-5.) The Federal Circuit affirmed-in-part and reversed-in-part in an opinion issued February 15, 2009. Rothman, 556 F.3d 1314. In reviewing the district court's decision, the Federal Circuit exercised plenary review, applying the same standard that was applied by the district court. Id. at 1316. Specifically, the Federal Circuit applied the standard for a motion for judgment as a matter of law, which may be granted only if "the non-

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moving party has benefited from a full hearing on the issue during a jury trial, and where a reasonable jury would not have a legally sufficient evidentiary basis to find for the non-moving party on that issue." Id. (citing Fed...