Cobra International, Inc. v. Bcny International, Inc.
702 F. App'x 994
| Fed. Cir. | 2017Background
- Cobra International sued multiple retailers and individuals in 2005 for infringement of U.S. Patent No. 5,821,858 (lighted footwear circuitry).
- Discovery revealed an unnamed co-inventor; in 2015 Cobra identified the co-inventor and assigned that person’s ownership interest to Pangaea Global Enterprises, LLC (Pangaea).
- Cobra obtained a PTO certificate of correction adding the co-inventor on September 15, 2015.
- Cobra waited more than two months after the certificate before moving (Nov. 18, 2015) for leave to amend its complaint to add Pangaea as a co-owner; the district court denied leave for lack of good cause and dismissed the complaint without prejudice.
- Defendants moved for sanctions under 28 U.S.C. § 1927 and 35 U.S.C. § 285; the district court denied sanctions as untimely under the Southern District of Florida local rule.
- Cobra appealed the denial of leave to amend; defendants cross-appealed denial of summary judgment on noninfringement and denial of sanctions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Cobra showed good cause/diligence to amend complaint after PTO certificate | Cobra argued it had been diligent and the PTO certificate justified delay | Defendants argued Cobra unreasonably delayed filing motion more than two months after certificate | Affirmed denial: district court reasonably found lack of diligence and no good cause to amend after deadlines closed |
| Whether denial of district court’s summary-judgment motion is appealable / whether defendants may appeal noninfringement | Defendants sought review of denial and argued entitlement to noninfringement judgment | Cobra argued denial was not appealable and no final judgment on infringement existed | Affirmed: denial of summary judgment generally not appealable; defendants needed a final judgment on infringement to appeal |
| Whether district court could decide merits without joining co-owner (Pangaea) | Cobra sought adjudication despite not adding co-owner | Defendants argued merits should be decided | Affirmed: court properly declined merits because missing co-owner prevents adjudication of patent rights |
| Timeliness of sanctions motion under S.D. Fla. L.R. 7.3(a)(1) | Cobra implied post-judgment filings tolled the 60-day local-rule deadline | Defendants argued local rule required filing within 60 days and post-judgment motions do not toll | Affirmed denial of sanctions: district court correctly applied local rule and found the sanctions motion untimely |
Key Cases Cited
- Lowe's Home Ctrs., Inc. v. Olin Corp., 313 F.3d 1307 (11th Cir.) (district court may deny leave to amend after close of discovery and deadlines)
- S. Grouts & Mortars, Inc. v. 3M Co., 575 F.3d 1235 (11th Cir.) (lack of diligence can justify denial of post-deadline amendment)
- MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326 (Fed. Cir.) (denial of summary judgment is ordinarily not appealable)
- Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir.) (denial of summary judgment generally not immediately appealable)
- Johnson v. Jones, 515 U.S. 304 (U.S.) (limits on interlocutory appeals from denials of summary judgment)
- Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 583 F.3d 832 (Fed. Cir.) (district court erred in reaching merits when a co-owner of patent was not joined)
- Clark v. Hous. Auth. of Alma, 971 F.2d 723 (11th Cir.) (post-judgment motions or appeals do not toll local-rule time limits)