Insituform Technologies, LLC v. Cosmic Tophat, LLC

959 F. Supp. 2d 1335, 2013 WL 4038722, 2013 U.S. Dist. LEXIS 112318
CourtDistrict Court, N.D. Georgia
DecidedAugust 9, 2013
DocketCivil Action No. 1:08-CV-333-TCB
StatusPublished
Cited by4 cases

This text of 959 F. Supp. 2d 1335 (Insituform Technologies, LLC v. Cosmic Tophat, LLC) is published on Counsel Stack Legal Research, covering District Court, N.D. Georgia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Insituform Technologies, LLC v. Cosmic Tophat, LLC, 959 F. Supp. 2d 1335, 2013 WL 4038722, 2013 U.S. Dist. LEXIS 112318 (N.D. Ga. 2013).

Opinion

ORDER

TIMOTHY C. BATTEN, SR., District Judge.

This case is before the Court on the motion for summary judgment [862] filed by Plaintiffs Insituform Technologies, LLC and INA Acquisition Corp.

I. Background

This is a patent-infringement suit that began in the U.S. District Court for the Eastern District of Virginia in November 2007. The original Plaintiffs were Insituform Technologies, Inc. and Insituform (Netherlands), B.V., Inc. Insituform (Netherlands), B.V., Inc. has assigned its rights in the patents-in-suit to INA Acquisition Corp., and Insituform Technologies, Inc. has converted to a limited liability company. Thus, the current Plaintiffs are INA Acquisition Corp. and Insituform Technologies, LLC. In any event, Plaintiffs will be referred to collectively as “Insituform.”

Insituform holds several patents relating to a process it developed to repair sewage pipelines without incurring the expenses normally associated with such repair. In particular, Insituform’s process allows pipelines to be repaired without the expense or inconvenience of digging into the ground. This is accomplished by installing a “eured-in-place pipeline” or “CIPP.” A CIPP is a flexible liner that is soaked in resin and inserted into an existing pipeline. When the resin cures, the CIPP hardens to form a “pipe within a pipe,” thus restoring the structural integrity of the pipeline.

Defendant Cosmie-Sondermasehinenbau, GmbH (“Cosmic-Austria”) is an Austrian corporation that formerly manufactured a competing CIPP product known as the Cosmic TopHat. The claims in this action arise out of Insituform’s allegation that the Cosmic TopHat infringes its patents. Defendant Johann Kübel is Cosmic-Austria’s owner and president, and Defendant Cosmic TopHat, LLC is a California limited liability company that is also owned and controlled by Kübel.

[1339]*1339After being added as a Defendant, Cosmic-Austria (at Kubel’s direction) actively-defended against Insituform’s claims by, inter alia, participating in discovery, responding to Insituform’s motion for a more definite statement on Cosmie-Austria’s counterclaims, responding to Insituform’s infringement contentions pursuant to Patent Local Rule 4.2, serving a disclosure of invalidity contentions pursuant to Patent Local Rule 4.3, filing a claim-construction brief, responding to Insituform’s claim-construction brief, participating in a claim-construction hearing, and filing a post-hearing brief.

On August 26, 2009, Insituform moved for entry of default judgment against Cosmic-Austria as a sanction for discovery misconduct. The motion argued that an entry of default was appropriate because, inter alia, Cosmic-Austria had not permitted Insituform to fully inspect its Austrian facilities despite being ordered to do so and had withheld information in response to an interrogatory that the Court had ordered it to answer.

On February 19, 2010, after extensive briefing, the Court denied Insituform’s motion for entry of default. The Court found that Cosmic-Austria was guilty of bad-faith discovery misconduct but concluded that lesser sanctions would suffice. Specifically, the Court ordered Cosmic-Austria to pay the attorneys’ fees Insituform incurred as a result of its discovery misconduct.

On May 28, 2010, Insituform moved for reconsideration of the Court’s February 19, 2010 order based on Cosmic-Austria’s failure to pay any of its attorneys’ fees. On November 22, 2010, the Court granted Insituform’s motion for reconsideration. The Court found that although Cosmic-Austria had ample opportunity, it failed to make any payment toward Insituform’s attorneys’ fees or to demonstrate its inability to pay. As a result, the Court found it necessary to impose a more severe sanction and entered default against Cosmic-Austria on Insituform’s second amended complaint.

When the Court entered default against Cosmic-Austria, it also directed the parties to brief and submit evidence on damages. On June 8, 2011, after extensive briefing and a hearing, the Court issued an order in which it calculated a reasonable royalty of $136 per TopHat sold by Cosmic-Austria. The Court then multiplied that royalty by 29,516 sales, subtracted $51,600 for royalties already paid to Insituform, and entered a default judgment in the amount of $3,962,576.

On July 11, 2011, Cosmic-Austria filed a motion for reconsideration of the Court’s June 8, 2011 order on damages. On March 29, 2012, 850 F.Supp.2d 1336 (N.D.Ga.2012), the Court denied that motion, and on August 9, 2012, the Court directed the clerk to enter final judgment against Cosmic-Austria and in favor of Insituform based upon the $136 reasonable royalty it had previously calculated.

In the present motion, Insituform seeks summary judgment on its inducement claim against Kübel. It also seeks summary judgment on the issue of whether Cosmic TopHat is merely the alter ego of Kübel such that piercing the corporate veil is appropriate.

II. Discussion

Summary judgment is appropriate when “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R.CrvP. 56(a). There is a “genuine” dis[1340]*1340pute as to a material fact if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” FindWhat Investor Grp. v. FindWhat.com, 658 F.3d 1282, 1307 (11th Cir.2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). In making this determination, however, “a court may not weigh conflicting evidence or make credibility determinations of its own.” Id. Instead, the court must “view all of the evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party’s favor.” Id.

“The moving party bears the initial burden of demonstrating the absence of a genuine dispute of material fact.” Id. (citing Celotex Corp. v. Catrett, 477 U.S. 317, 323,106 S.Ct. 2548, 91 L.Ed.2d 265 (1986)). If the moving party would have the burden of proof at trial, that party “must show affirmatively the absence of a genuine issue of material fact: it ‘must support its motion with credible evidence ... that would entitle it to a directed verdict if not controverted at trial.’ ” United States v. Four Parcels of Real Prop., 941 F.2d 1428, 1438 (11th Cir.1991) (quoting Celotex, 477 U.S. at 331, 106 S.Ct. 2548). “If the moving party makes such an affirmative showing, it is entitled to summary judgment unless the nonmoving party, in response, ‘come[s] forward with significant, probative evidence demonstrating the existence of a triable issue of fact.’ ” Id. (quoting Celotex, 477 U.S. at 331, 106 S.Ct. 2548).

A. Ktibel’s Liability for Inducement

Under 35 U.S.C. § 271

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Bluebook (online)
959 F. Supp. 2d 1335, 2013 WL 4038722, 2013 U.S. Dist. LEXIS 112318, Counsel Stack Legal Research, https://law.counselstack.com/opinion/insituform-technologies-llc-v-cosmic-tophat-llc-gand-2013.