Predator International, Inc. v. Gamo Outdoor USA, Inc.
793 F.3d 1177
| 10th Cir. | 2015Background
- Predator International sued Gamo in federal court (2009) asserting trade-dress, copyright, consumer-protection, unjust-enrichment, unfair-competition, and patent-infringement claims; John Cogswell represented Predator.
- A co-inventor, Lee Phillips, later claimed a 50% ownership interest in the patent; Predator filed a state-court action against Phillips to resolve ownership and voluntarily dismissed the federal patent-infringement claim pending resolution of ownership.
- Phillips assigned his purported patent interest to Gamo; state-court litigation expanded after Gamo intervened and asserted counterclaims and third-party claims.
- In July 2011 Predator moved in federal court to (1) supplement its complaint to add a patent-ownership claim against Gamo (Rule 15(d)) and (2) amend to reinstate the patent-infringement claim (stayed pending ownership resolution).
- The district court denied relief and imposed a Rule 11 sanction on Cogswell, finding the motion constituted forum shopping, was untimely, and reasserted a claim without new standing evidence. Cogswell appealed.
- The Tenth Circuit reversed the Rule 11 sanction, holding the motions to supplement and amend were not unwarranted under existing law and the district court abused its discretion (primarily because its forum-shopping rationale was legally infirm).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Tenth Circuit had jurisdiction over the appeal given original patent claims | Cogswell: appeal governed by the operative (fourth amended) complaint that omitted patent-infringement, so regional circuit jurisdiction applied | Gamo: original patent claims might vest exclusive Federal Circuit jurisdiction | Held: Tenth Circuit had §1291 jurisdiction because the operative complaint at time of appeal lacked a patent claim |
| Whether the Rule 11 sanction was proper for filing motions to supplement (Rule 15(d)) and amend (Rule 15(a)) | Cogswell: motions were objectively reasonable; supplementation permissible for post- complaint events and amendment to reinstate infringement was proper with a stay | Gamo: motions were forum shopping, untimely, and reasserted infringement without new evidence of standing | Held: Rule 11 sanction reversed — motions were not unwarranted; court abused discretion, particularly in relying on forum-shopping rationale |
| Whether pursuing the ownership claim in federal court constituted improper forum shopping | Predator: concurrent federal jurisdiction arguable; federal forum offered efficiency and avoided state-court expansion delays | Gamo: pursuing the same claim pending in state court was forum shopping and improper under Rule 11 | Held: pursuing concurrent forum was not per se improper; district court misapplied forum-shopping doctrine and failed to identify an abstention doctrine that clearly barred the amendment |
| Whether Predator lacked standing (or new evidence of standing) so as to make reinstating the infringement claim frivolous | Predator: alleged facts sufficiently pleaded ownership at pleading stage; later state-court developments justified reassertion and stay; standing need not be proved at pleading | Gamo: Predator had previously conceded lack of standing and had no new evidence, making reassertion imprudent | Held: plea-stage allegations adequately supported standing for amendment purposes; reassertion was not objectively unreasonable |
Key Cases Cited
- Gilles v. United States, 906 F.2d 1386 (10th Cir. 1990) (an amended pleading supersedes the prior pleading)
- Mink v. Suthers, 482 F.3d 1244 (10th Cir. 2007) (amended complaint renders the original without legal effect)
- Grupo Dataflux v. Atlas Global Grp., L.P., 541 U.S. 567 (2004) (jurisdiction is assessed based on the state of things at the time jurisdiction is invoked)
- Gronholz v. Sears, Roebuck & Co., 836 F.2d 515 (Fed. Cir. 1987) (Federal Circuit lacks jurisdiction if patent claim was voluntarily dismissed before appeal)
- Lujan v. Defenders of Wildlife, 504 U.S. 555 (1992) (standing elements must be supported at the successive litigation stages; pleading-stage allegations suffice)
- Cooter & Gell v. Hartmarx Corp., 496 U.S. 384 (1990) (standard of review and limits on Rule 11 sanctions)
- Adamson v. Bowen, 855 F.2d 668 (10th Cir. 1988) (Rule 11 objective-reasonableness standard for attorneys)
- Colorado River Water Conservation Dist. v. United States, 424 U.S. 800 (1976) (abstention principles between concurrent state and federal proceedings)
- Moses H. Cone Mem’l Hosp. v. Mercury Constr. Corp., 460 U.S. 1 (1983) (factors to consider under Colorado River abstention)
- Wilton v. Seven Falls Co., 515 U.S. 277 (1995) (district court’s discretion under the Declaratory Judgment Act)