3 UNITED STATES DISTRICT COURT
4 DISTRICT OF NEVADA
5 * * *
6 COMPOSITE RESOURCES INC., Case No. 2:17-cv-01755-MMD-VCF
7 Plaintiff/Counter Defendant, ORDER
8 v.
9 RECON MEDICAL LLC,
10 Defendant/Counter Claimant.
11 12 This is a patent, trademark, and unfair competition case about tourniquets used to 13 stop the flow of blood to a body part when that body part is severely injured. This order 14 addresses several motions and issues arising out of the last hearing the Court held in this 15 case. (ECF No. 199 (“Hearing”).) The motions this order addresses are 16 Defendant/Counter Claimant Recon Medical LLC’s motion for clarification (ECF No. 206) 17 and Recon’s motion for a pretrial order (ECF No. 208). As further explained below, the 18 Court will grant the motion for clarification in part, grant the motion for a pretrial order, and 19 address several other issues the parties raised in the simultaneous briefs the Court 20 ordered them to file at the Hearing (ECF Nos. 204, 205).1 This order is also an attempt to 21 course correct this case, where both sides have recently started raising arguments that 22 should be raised in a properly noticed motion—and not on the single issue the Court 23 directed briefing on—in violation of the Court’s orders at the Hearing and more generally 24 not in compliance with the Local Rules. 25 The Court begins with Recon’s motion for clarification (ECF No. 206) as to the 26 finding the Court made at the Hearing on Recon’s argument that Plaintiff/Counter 27 1 Defendant Composite Resources Inc. (“CRI”) violated LPR 1-6. The Court grants the 2 motion in part to reiterate that CRI may proceed to trial on its claim that Recon’s “Gen 4” 3 tourniquet infringes CRI’s asserted patent claims. The motion is otherwise denied, as the 4 Court was quite clear at the Hearing—that while Plaintiff may have technically violated 5 LPR 1-6 by failing to amend its infringement contention to include the “Gen 4” tourniquet, 6 no prejudice has resulted. If Recon seeks additional clarification about the Court’s findings 7 on the record at the Hearing, Recon may obtain a transcript of the Hearing. (ECF No. 199.) 8 The Court next reiterates that, at the Hearing, it directed supplemental briefing on 9 the issue of whether this case should proceed to a bench or jury trial only. (ECF No. 199.) 10 Despite the Court’s order, both sides raised issues outside of that scope in their 11 supplemental briefs on the bench or jury trial issue. Specifically, CRI suggests that it 12 should proceed to trial for injunctive relief on its trademark and unfair competition claims 13 in addition to its patent infringement claims. (ECF No. 205 at 2.) For its part, Recon argues 14 the Court should dismiss this case on the eve of trial because CRI is violating the anti- 15 claim-splitting doctrine. (ECF No. 204 at 1-3.) CRI’s suggestion and Recon’s argument are 16 outside the scope of what the Court ordered them to brief and therefore improper. But the 17 Court will nonetheless briefly address these two issues before turning to the question of 18 whether this will be a jury or bench trial. 19 As Recon argues in its motion for a pretrial order (ECF No. 208), CRI’s request to 20 proceed to trial for injunctive relief on its trademark and unfair competition claims violates 21 the Bankruptcy Court’s stay order (id. at 3). Moreover, CRI’s request does not align with 22 the Court’s understanding from the Hearing that CRI is only proceeding to trial for 23 injunctive relief on its patent infringement claims, and as noted, is outside the scope of 24 what the Court ordered CRI to brief at the Hearing. The Court grants Recon’s motion for 25 a pretrial order (id.) to the extent necessary to make it clear that CRI may proceed to trial 26 for injunctive relief on its patent infringement claims only. CRI may not proceed to trial for 27 1 injunctive relief on its trademark and unfair competition claims unless and until the 2 Bankruptcy Court alters or lifts its stay order. 3 The Court similarly reiterates that Recon’s argument that CRI’s current approach 4 to this case violates the anti-claim-splitting doctrine is outside the scope of the issue the 5 Court ordered Recon to brief at the Hearing. However, because the issue is potentially 6 case-dispositive, the Court grants Recon leave to file a proper motion subject to the 7 briefing schedule described below if Recon wishes. 8 Turning to the bench or jury trial issue, CRI argues this case should proceed to a 9 bench trial because the accused infringer has no right to a jury trial if the patentee, like 10 CRI here—having dismissed its monetary damages claims in this case—seeks only 11 equitable relief. (ECF No. 205 at 2-5.) Recon counters that this case should proceed to a 12 jury trial because CRI is still seeking monetary damages, albeit before the Bankruptcy 13 Court. (ECF No. 204 at 4-5.) The Court agrees with Recon. 14 This dispute presents a close call on an open question of law that the Court will— 15 and should—resolve by siding with Recon. See Granite Rock Co. v. Int’l Bhd. of 16 Teamsters, Freight, Constr., Gen. Drivers, Warehousemen & Helpers, Loc. 287 (AFL- 17 CIO), 649 F.3d 1067, 1069 (9th Cir. 2011) (“In close cases, a court should err on the side 18 of preserving the right to a jury trial.”) (affirming the district court’s decision to deny a 19 motion to strike a jury demand) (citation omitted). On the one hand, CRI has dismissed its 20 monetary damages claims in this case. (ECF No. 203.) On the other, that dismissal is 21 without prejudice (id.), and there is also no dispute that CRI continues to assert monetary 22 damages claims for patent infringement in the proceedings before the Bankruptcy Court 23 (ECF Nos. 204 at 4-5, 205 at 2 n.1). 24 But for CRI’s simultaneous pursuit of monetary damages in the bankruptcy 25 proceedings, In re Tech. Licensing Corp., 423 F.3d 1286, 1290-91 (Fed. Cir. 2005) would 26 sanction CRI’s request to proceed to a bench trial. See id. (“Thus, if the patentee seeks 27 only equitable relief, the accused infringer has no right to a jury trial, regardless of whether 1 the accused infringer asserts invalidity as a defense (as in the Tegal case) or as a separate 2 claim (as in this case).”). However, there is no dispute that CRI is not only pursuing 3 equitable relief—as noted, CRI is pursuing monetary damages on the same patent 4 infringement claims it asserts here in the bankruptcy proceedings. (ECF Nos. 204 at 4-5, 5 205 at 2 n.1.) That renders In re Tech. Licensing Corp. distinguishable, where the Federal 6 Circuit Court of Appeals did not mention any simultaneous bankruptcy proceedings. See 7 generally 423 F.3d 1286. The Court could take a narrow view of In re Tech. Licensing 8 Corp. and ignore the proceedings before the Bankruptcy Court, but that would violate the 9 rule mentioned above that, in close cases, the Court should preserve the right to jury trial. 10 Moreover, the Court does not wish to invite mandamus proceedings by declaring that this 11 case will be a bench trial, see id. at 1288 (“the right to grant mandamus to require jury trial 12 where it has been improperly denied is settled”) (citation omitted), and the Court expected 13 this case to proceed to a jury trial all along in any event, particularly considering that 14 whether patent infringement occurred is normally a fact question for the jury, see Markman 15 v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996).
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3 UNITED STATES DISTRICT COURT
4 DISTRICT OF NEVADA
5 * * *
6 COMPOSITE RESOURCES INC., Case No. 2:17-cv-01755-MMD-VCF
7 Plaintiff/Counter Defendant, ORDER
8 v.
9 RECON MEDICAL LLC,
10 Defendant/Counter Claimant.
11 12 This is a patent, trademark, and unfair competition case about tourniquets used to 13 stop the flow of blood to a body part when that body part is severely injured. This order 14 addresses several motions and issues arising out of the last hearing the Court held in this 15 case. (ECF No. 199 (“Hearing”).) The motions this order addresses are 16 Defendant/Counter Claimant Recon Medical LLC’s motion for clarification (ECF No. 206) 17 and Recon’s motion for a pretrial order (ECF No. 208). As further explained below, the 18 Court will grant the motion for clarification in part, grant the motion for a pretrial order, and 19 address several other issues the parties raised in the simultaneous briefs the Court 20 ordered them to file at the Hearing (ECF Nos. 204, 205).1 This order is also an attempt to 21 course correct this case, where both sides have recently started raising arguments that 22 should be raised in a properly noticed motion—and not on the single issue the Court 23 directed briefing on—in violation of the Court’s orders at the Hearing and more generally 24 not in compliance with the Local Rules. 25 The Court begins with Recon’s motion for clarification (ECF No. 206) as to the 26 finding the Court made at the Hearing on Recon’s argument that Plaintiff/Counter 27 1 Defendant Composite Resources Inc. (“CRI”) violated LPR 1-6. The Court grants the 2 motion in part to reiterate that CRI may proceed to trial on its claim that Recon’s “Gen 4” 3 tourniquet infringes CRI’s asserted patent claims. The motion is otherwise denied, as the 4 Court was quite clear at the Hearing—that while Plaintiff may have technically violated 5 LPR 1-6 by failing to amend its infringement contention to include the “Gen 4” tourniquet, 6 no prejudice has resulted. If Recon seeks additional clarification about the Court’s findings 7 on the record at the Hearing, Recon may obtain a transcript of the Hearing. (ECF No. 199.) 8 The Court next reiterates that, at the Hearing, it directed supplemental briefing on 9 the issue of whether this case should proceed to a bench or jury trial only. (ECF No. 199.) 10 Despite the Court’s order, both sides raised issues outside of that scope in their 11 supplemental briefs on the bench or jury trial issue. Specifically, CRI suggests that it 12 should proceed to trial for injunctive relief on its trademark and unfair competition claims 13 in addition to its patent infringement claims. (ECF No. 205 at 2.) For its part, Recon argues 14 the Court should dismiss this case on the eve of trial because CRI is violating the anti- 15 claim-splitting doctrine. (ECF No. 204 at 1-3.) CRI’s suggestion and Recon’s argument are 16 outside the scope of what the Court ordered them to brief and therefore improper. But the 17 Court will nonetheless briefly address these two issues before turning to the question of 18 whether this will be a jury or bench trial. 19 As Recon argues in its motion for a pretrial order (ECF No. 208), CRI’s request to 20 proceed to trial for injunctive relief on its trademark and unfair competition claims violates 21 the Bankruptcy Court’s stay order (id. at 3). Moreover, CRI’s request does not align with 22 the Court’s understanding from the Hearing that CRI is only proceeding to trial for 23 injunctive relief on its patent infringement claims, and as noted, is outside the scope of 24 what the Court ordered CRI to brief at the Hearing. The Court grants Recon’s motion for 25 a pretrial order (id.) to the extent necessary to make it clear that CRI may proceed to trial 26 for injunctive relief on its patent infringement claims only. CRI may not proceed to trial for 27 1 injunctive relief on its trademark and unfair competition claims unless and until the 2 Bankruptcy Court alters or lifts its stay order. 3 The Court similarly reiterates that Recon’s argument that CRI’s current approach 4 to this case violates the anti-claim-splitting doctrine is outside the scope of the issue the 5 Court ordered Recon to brief at the Hearing. However, because the issue is potentially 6 case-dispositive, the Court grants Recon leave to file a proper motion subject to the 7 briefing schedule described below if Recon wishes. 8 Turning to the bench or jury trial issue, CRI argues this case should proceed to a 9 bench trial because the accused infringer has no right to a jury trial if the patentee, like 10 CRI here—having dismissed its monetary damages claims in this case—seeks only 11 equitable relief. (ECF No. 205 at 2-5.) Recon counters that this case should proceed to a 12 jury trial because CRI is still seeking monetary damages, albeit before the Bankruptcy 13 Court. (ECF No. 204 at 4-5.) The Court agrees with Recon. 14 This dispute presents a close call on an open question of law that the Court will— 15 and should—resolve by siding with Recon. See Granite Rock Co. v. Int’l Bhd. of 16 Teamsters, Freight, Constr., Gen. Drivers, Warehousemen & Helpers, Loc. 287 (AFL- 17 CIO), 649 F.3d 1067, 1069 (9th Cir. 2011) (“In close cases, a court should err on the side 18 of preserving the right to a jury trial.”) (affirming the district court’s decision to deny a 19 motion to strike a jury demand) (citation omitted). On the one hand, CRI has dismissed its 20 monetary damages claims in this case. (ECF No. 203.) On the other, that dismissal is 21 without prejudice (id.), and there is also no dispute that CRI continues to assert monetary 22 damages claims for patent infringement in the proceedings before the Bankruptcy Court 23 (ECF Nos. 204 at 4-5, 205 at 2 n.1). 24 But for CRI’s simultaneous pursuit of monetary damages in the bankruptcy 25 proceedings, In re Tech. Licensing Corp., 423 F.3d 1286, 1290-91 (Fed. Cir. 2005) would 26 sanction CRI’s request to proceed to a bench trial. See id. (“Thus, if the patentee seeks 27 only equitable relief, the accused infringer has no right to a jury trial, regardless of whether 1 the accused infringer asserts invalidity as a defense (as in the Tegal case) or as a separate 2 claim (as in this case).”). However, there is no dispute that CRI is not only pursuing 3 equitable relief—as noted, CRI is pursuing monetary damages on the same patent 4 infringement claims it asserts here in the bankruptcy proceedings. (ECF Nos. 204 at 4-5, 5 205 at 2 n.1.) That renders In re Tech. Licensing Corp. distinguishable, where the Federal 6 Circuit Court of Appeals did not mention any simultaneous bankruptcy proceedings. See 7 generally 423 F.3d 1286. The Court could take a narrow view of In re Tech. Licensing 8 Corp. and ignore the proceedings before the Bankruptcy Court, but that would violate the 9 rule mentioned above that, in close cases, the Court should preserve the right to jury trial. 10 Moreover, the Court does not wish to invite mandamus proceedings by declaring that this 11 case will be a bench trial, see id. at 1288 (“the right to grant mandamus to require jury trial 12 where it has been improperly denied is settled”) (citation omitted), and the Court expected 13 this case to proceed to a jury trial all along in any event, particularly considering that 14 whether patent infringement occurred is normally a fact question for the jury, see Markman 15 v. Westview Instruments, Inc., 517 U.S. 370, 384 (1996). In sum, the Court will hold a jury 16 trial unless Recon decides to file a proper motion to dismiss for violation of the anti-claim- 17 splitting doctrine, and the Court grants it. 18 It is therefore ordered that Recon’s motion for clarification (ECF No. 206) is granted 19 in part as specified herein. 20 It is further ordered that Recon’s motion for a pretrial order (ECF No. 208) is granted 21 as specified herein. 22 It is further ordered that, if Recon wishes to file a motion to dismiss this case for 23 violation of the anti-claim-splitting doctrine, it must file that motion by October 25, 2021. 24 Any response to that motion is due November 2, 2021. Any reply is due November 4, 25 2021. 26 /// 27 /// 1 It is further ordered that, if Recon does not timely file a motion to dismiss for violation 2 || of the anti-claim-splitting doctrine as specified herein, the Court will deem that argument 3 || abandoned. 4 It is further ordered that, unless the Court later decides to dismiss this case for 5 || violation of the anti-claim-splitting doctrine, this case will proceed to a jury trial in Reno, 6 || Nevada, on CRI’s claim for injunctive relief on its patent infringement claims only. 7 DATED THIS 22" Day of October 2021. MIRANDA M. DU 10 CHIEF UNITED STATES DISTRICT JUDGE 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28