Edge Systems LLC v. Aguila
708 F. App'x 998
| Fed. Cir. | 2017Background
- Edge Systems (owner of HydraFacial MD and several patents including U.S. Patent No. 6,299,620) sued Rafael Aguila and related parties for patent and trademark (common-law Serum Marks) infringement after Aguila sold look‑alike devices and used confusing website material.
- District court entered a preliminary injunction against Aguila; the injunction was affirmed on interlocutory appeal. Edge later moved for and obtained summary judgment on infringement of the ’620 and ’591 patents and a permanent injunction against Aguila’s use of the Serum Marks.
- Aguila attempted to defend based on prior trademark use supported by two invoices (purportedly from 1996 and 2004); the district court found the invoices of dubious authenticity, struck the affirmative defense, and imposed Rule 11 sanctions for Aguila’s continued reliance on them.
- Aguila challenged several discovery rulings: denial of his motion to strike Edge’s late expert report (Gary Loomis), and a protective order reducing noticed depositions from ten to five; the district court denied or granted those motions in part.
- Aguila appealed the sanctions, evidentiary/discovery rulings, summary judgment on patents, the scope of the permanent injunction (including effect on Aguila’s subsequently granted federal registrations), and invoked laches; the Federal Circuit affirmed in all respects.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Striking prior‑use trademark defense & Rule 11 sanctions | Aguila: invoices supported prior use; striking and sanctions were improper | Edge: invoices were inauthentic; Aguila knowingly relied on fraudulent documents | Court: affirmed striking and Rule 11 sanctions — documents were dubious, contradicted by Aguila's testimony, sanctions not an abuse of discretion |
| Motion to strike late expert report (Loomis) | Aguila: Loomis's report untimely under scheduling order; testimony should be excluded | Edge: 10‑day delay harmless; offered to make expert available for deposition | Court: denied strike — district court acted within discretion; delay harmless because deposition was offered and Aguila failed to pursue it |
| Protective order limiting depositions (10 → 5) | Aguila: entitled to noticed depositions; reduction improper | Edge: many notices were last‑minute, overbroad, and unduly burdensome | Court: affirmed limitation — magistrate reasonably found many notices baseless and burdensome; any error harmless as Aguila took none of the allowed depositions |
| Scope of permanent injunction vs. Aguila's federal registrations | Aguila: injunction effectively invalidates his PTO‑granted trademarks received during litigation | Edge: injunction enforces court’s finding of Edge’s common‑law rights and prohibits Aguila’s infringement | Court: injunction valid as to Edge’s adjudicated common‑law marks; federal registrations obtained by Aguila during litigation do not negate the injunction (Edge’s PTO cancellation petitions pending) |
| Summary judgment of patent infringement (’620 and ’591) | Aguila: accused device lacks claimed "abrasive fragment composition" / "abrading structure"; contested infringement | Edge: expert testimony and Aguila’s own website/records show accused devices meet claim limitations | Court: affirmed summary judgment for Edge — Aguila produced no contrary evidence to create genuine factual dispute |
| Laches defense to permanent injunction | Aguila: laches should bar injunction | Edge: laches not shown | Court: rejected laches; Aguila’s appellate treatment earlier was conclusory and insufficient |
Key Cases Cited
- Chambers v. NASCO, Inc., 501 U.S. 32 (1991) (district court's inherent powers include managing docket and sanctioning bad‑faith conduct)
- Cooter & Gell v. Hartmarx Corp., 496 U.S. 384 (1990) (standards for Rule 11 sanctions)
- Maiz v. Virani, 253 F.3d 641 (11th Cir. 2001) (abuse of discretion standard for sanctions review)
- Thompson v. RelationServe Media, Inc., 610 F.3d 628 (11th Cir. 2010) (sanctions where only patently frivolous evidence offered)
- OFS Fitel, LLC v. Epstein, Becker & Green, P.C., 549 F.3d 1344 (11th Cir. 2008) (Rule 37(c)(1) exclusion analysis — substantial justification or harmlessness)
- Equity Lifestyle Props., Inc. v. Fla. Mowing & Landscape Serv., Inc., 556 F.3d 1232 (11th Cir. 2009) (district courts' broad discretion to manage cases)
- Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (appellate review: apply regional circuit standard to procedural issues while applying federal law to substantive patent questions)