Arlington Indus., Inc. v. Bridgeport Fittings, Inc.

106 F.Supp.3d 506

ARLINGTON INDUSTRIES, INC., Plaintiff

v.BRIDGEPORT FITTINGS, INC., Defendant.

Civil Action No. 3:06–CV–1105.

United States District Court, M.D. Pennsylvania.

Signed May 7, 2015.

Ali Hossein Khan Tehrani, Kathryn L. Clune, Amir Katz, Crowell & Moring, LLP, Washington, DC, Robert J. Tribeck, Amanda J. Lavis, Rhoads & Sinon LLP, Harrisburg, PA, Jacob Z. Zambrzycki, Crowell & Moring, LLP, San Francisco, CA, for Plaintiff.

Alan M. Anderson, Laura Reagan Florence, Matthew R. Palen, Aaron C. Nyquist, Alan Anderson Law Firm LLC, Minneapolis, MN, James C. Oschal, Robert N. Gawlas, Jr., Rosenn, Jenkins & Greenwald, Wilkes Barre, PA, Mark E. Ungerman, Morrison & Foerster, LLP, Washington, DC, for Defendant.

MEMORANDUM

CHRISTOPHER C. CONNER, Chief Judge.

Presently before the court is Arlington Industries, Inc.'s ("Arlington") motion (Doc. 465) for summary judgment of damages for sales of Bridgeport Fittings, Inc.'s ("Bridgeport") Whipper–Snap Duplex Connectors, catalog numbers 3838ASP and 3838SP, previously held to infringe Arlington's United States Patent Number 5,266,050 ("the '050 patent"). (See Doc. 458). For the reasons that follow, the court will grant the motion.

I. Factual Background & Procedural History

Arlington and Bridgeport are fierce competitors in the electrical conduit fitting industry. This case concerns a particular type of electrical conduit fitting with a snap-in feature. Litigation between the parties over patents underlying this type of fitting has been ongoing since 2001. See Arlington Indus., Inc. v. Bridgeport Fittings, Inc., Civ.A.No. 3:01–CV–0485 (M.D.Pa.) (hereinafter "Arlington I "). The Arlington I litigation, instituted in 2001, originally concerned only Bridgeport's Single Connector snap-in products. Bridgeport's Duplex Connector fittings entered the dispute in 2006, with the commencement of the above-captioned case (hereinafter "Arlington II "). (Doc. 3). The Duplex Connectors later became a part of Arlington I during the discovery phase of that litigation. Unbeknownst to the Honorable A. Richard Caputo, who initially oversaw the above-captioned action,¹ and the undersigned, who presided over the Arlington I litigation, the parties litigated identical claims regarding the Duplex Connectors in the two cases. Through oversight or inadvertence, neither party found it necessary to seek immediate consolidation, and this matter and Arlington I proceeded on parallel tracks. Suffice it to say that the procedural path leading to the motion sub judice has been rather tortured.

A. Arlington's '050 Patent

In 1992, Arlington developed and manufactured a new type of electrical conduit fitting, intended to replace previous units whose installation required the use of two hands to screw the device into an electrical junction box.² (See Doc. 102, Ex. B). This electrical conduit fitting, also called a connector, allows a user to quickly connect the device to a junction box using one hand instead of two, thereby reducing the time and effort required during installation. (See id. at col. 1).

On December 15, 1992, Arlington acquired United States Patent Number 5,171,164 ("the '164 patent"), which covered the design of this device. (Arlington I, Doc. 404 ¶ 2; Doc. 432 ¶ 2). The following year, Arlington secured the '050 patent. (Doc. 102, Ex. B). The '050 patent was a "continuation patent," meaning that it shared a common specification with the '164 patent, but included different claims. (Arlington I, Doc. 404 ¶ 2; Doc. 432 ¶ 2).

In 1999, Bridgeport introduced its own product line of quick-connect fittings called the "Snap–In Fitting." (See Arlington I, Doc. 170 at 7–10). Certain characteristics of the Snap–In Fittings were nearly identical to those featured in Arlington's patented products. (See Arlington I, Doc. 310 ¶ 2.5). Arlington filed the Arlington I litigation in March 2001, alleging that the Snap–In Fittings infringed both the '164 and the '050 patents. (See Arlington I, Doc. 1).

B. The Whipper–Snap Duplex Connectors

In September 2005, Bridgeport designed a new type of quick-connect electrical fitting similar to the '050 patent, which it called the "Whipper–Snap." (See Arlington I, Doc. 404 ¶ 14; Doc. 432 ¶ 14). Bridgeport subsequently initiated an action requesting a declaratory judgment that its Whipper–Snap fittings did not infringe the '050 patent. (See Arlington I, Doc. 584). In an order dated April 6, 2006, the court consolidated Bridgeport's declaratory judgment action with Arlington I. (Arlington I, Doc. 267).

On February 18, 2003, Arlington acquired United States Patent Number 6,521,831 ("the '831 patent") for a type of two-wire, or duplex, electrical fitting. (Doc. 114 ¶ 2; Doc. 154 ¶ 2; Doc. 328 at 3). Arlington filed the instant litigation on May 31, 2006, alleging that Bridgeport's Duplex Connectors-two products in the Whipper–Snap product line-infringed the '831 patent. (Doc. 1). In response, Bridgeport filed a petition with the United States Patent & Trademark Office ("PTO") seeking inter partes reexamination of the '831 patent. ( See Docs. 139, 142). The PTO granted Bridgeport's request and shortly thereafter commenced its review. (See Docs. 139, 142).

By amended complaint dated June 27, 2006, Arlington asserted a second claim against the Duplex Connectors, alleging that they infringed the '050 patent. (Doc. 3). This claim also became a part of Arlington I during discovery. From that point forward, the parties litigated the same issue—infringement of the '050 patent by the Duplex Connectors—in both Arlington I and Arlington II.

C. Protracted Litigation

On December 4, 2007, Judge Caputo issued his Markman claim construction ruling on the '050 patent. (Doc. 98). Nearly three months later, on February 25, 2008, the Arlington I court issued its Markman ruling in which it construed certain terms of the '050 patent in a manner materially different from the construction issued by Judge Caputo. (Arlington I, Doc. 376). The parties filed motions for summary judgment in each case. (Arlington I, Docs. 382, 385; Arlington II, Docs. 110, 112, 113). On September 18, 2008, Judge Caputo granted Bridgeport's motions for summary judgment in the above-captioned case, concluding that Arlington could not prove infringement of the '050 patent by Bridgeport's Duplex Connectors. (Doc. 307). However, on February 4, 2009, the Arlington I court denied the parties' cross-motions for summary judgment on the issue of infringement and set trial for September 2009. (See Arlington I, Docs. 471, 474).

Days before trial, Bridgeport filed a motion to stay the trial in Arlington I on claim and issue preclusion grounds as a result of Judge Caputo's judgment of non-infringement of the Duplex Connectors in the above-captioned case. (Arlington I,Doc. 561). The undersigned denied the motion, but excised the Duplex Connectors from trial to circumvent the issue preclusion conundrum stemming from conflicting claim constructions. (Arlington I, Doc. 584). A jury returned a verdict in favor of Arlington, finding that thirty of Bridgeport's Single Connector products infringed the '050 patent. (Arlington I, Doc. 632). The jury awarded Arlington lost profits damages and determined that Arlington was entitled to a reasonable royalty rate of 12%. (Id. )

After the trial, Bridgeport filed a motion for renewed judgment as a matter of law and for a new trial, alleging in part that res judicata barred the jury's verdict concerning the Single Connectors. See Arlington I, 692 F.Supp.2d 487, 498–503 (M.D.Pa.2010). The court found that Judge Caputo's claim construction in Arlington II could be entitled to issue preclusive effect, but the court declined to apply the doctrine because "relitigation ha [d] already occurred" and Bridgeport delayed in presenting the issue until "the eve of a complex trial with witnesses, advocates, and the court assembled at significant expense." Id. at 502. The court further found that claim preclusion did not apply because Bridgeport failed to establish that the Single Connectors adjudged infringing at trial were "essentially the same" device as the Duplex Connectors adjudged non-infringing in Arlington II pursuant to Judge Caputo's claim construction. Id. at 503.

Bridgeport also filed a motion to alter or amend the judgment in Arlington I, requesting in part that the court enter final judgment with respect to the Duplex Connectors. (Arlington I, Doc. 774). The Arlington I court found that, based on Judge Caputo's judgment of non-infringement of the Duplex Connectors in the above-captioned case, Bridgeport was entitled to judgment of non-infringement as a matter of law on the Duplex Connectors. (Id. )

The parties appealed both cases to the United States Court of Appeals for the Federal Circuit. On January 20, 2011, the Federal Circuit issued its opinion with respect to the above-captioned matter. Arlington II, 632 F.3d 1246 (Fed.Cir.2011). Therein, the Federal Circuit vacated the grant of summary judgment of non-infringement of the '050 and '831 patents by the Duplex Connectors due to an erroneous claim construction in Arlington II. id. The mandate issued on April 21, 2011. (Doc. 365). Judge Caputo subsequently re-opened Arlington II on June 24, 2011 and re-assigned the case to the undersigned for all further proceedings. (Doc. 368). On July 18, 2011, the court granted Arlington's motion for a preliminary injunction, enjoining Bridgeport from directly or indirectly making, using, selling, offering to sell or importing, or causing or inducing others to make, use, sell, offer to sell or import the Duplex Connectors. (Doc. 392). That preliminary injunction dissolved on December 4, 2011, when the '050 patent expired.

Following the Federal Circuit's decision in the above-captioned matter, the parties stipulated to the dismissal of the Duplex Connectors from Arlington I. (Arlington I, Docs. 838, 839, 840). The Federal Circuit affirmed the judgment in Arlington I on September 6, 2012. (Arlington I, Doc. 841). Arlington then...