AIR TURBINE TECHNOLOGY v. ATLAS COPCO AB (S.D.Fla. 10-3-2003)

CASE NO. 01-8288-CIV-MARRAUnited States District Court, S.D. Florida.
October 3, 2003

ORDER DENYING PLAINTIFFS MOTION PURSUANT TO RULE 54fb) ORDER DENYING PLAINTIFFS MOTION FOR CONTINUANCE
KENNETH MARRA, District Judge

THIS CAUSE is before the Court upon Plaintiffs Expedited Motion pursuant to Rule 54(b) for Final Judgment as to Counts II, III, IV and VI and to stay trial [DE 444], Plaintiffs Motion for Expedited Briefing Schedule [DE 453], and Plaintiffs Expedited Motion to Continue Trial pursuant to Rule 15(b), or in the alternative, Motion to Deny Defendants’ Request to Amend Answers and Affirmative Defenses [DE 452]. The Court has carefully considered the motions and is otherwise fully advised in the premises.

This Court recently entered summary judgment in favor of Defendants on several claims in Plaintiffs Amended Complaint. However, summary judgment was denied as to Plaintiffs claims for patent infringement[1] and for breach of a confidential relationship. Plaintiff now seeks this Court to enter final judgment as to the four claims for which summary judgment was granted, and to stay the trial on the remaining claims. Defendants oppose the motion.

Under Rule 54(b) of the Federal Rules of Civil Procedure, if this Court expressly

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determines that there is no just reason for delay, it may enter final judgment as to some of the claims. Plaintiff argues that allowing it to appeal the summary judgment ruling now will avoid the potential of having two trials. The Court disagrees. The primary remaining claim left for trial is a patent infringement claim. The issues relevant to the patent claim are different from the issues decided upon summary judgment (with the exception of patent damages issues). Therefore, the Court concludes that the current trial should proceed, and any appeal would then resolve all issues.

Plaintiff has also moved to continue the trial based upon its assertion that Defendants have attempted to amend their answer and affirmative defenses by adding claims of invalidity based upon prior art and anticipation. Plaintiff asserts that Defendants’ untimely “Notice of Invalidity Issues” seeks to amend its answer and therefore Plaintiff will suffer prejudice for having to rebut these undisclosed issues. At the pretrial conference on Friday, September 26, 2003, the Court had directed Defendants to submit by noon on Monday, September 29, 2003 where in their answers or expert disclosures the issues of invalidity were raised. Defendants submitted this filing after filing hours on Monday, September 29, 2003, due to confusion over whether the 12 noon deadline covered both this filing and their response to Plaintiffs motion to amend the claim construction order.

Defendants argue that Plaintiff will suffer no prejudice from inclusion of the prior art invalidity defense at trial because the prior art invalidity defense was raised by Plaintiffs expert disclosures, Defendants’ discovery responses, and addressed by Plaintiff in its own portion of the pretrial stipulation and proposed jury instructions. In its actual answers to the complaint, Defendants specifically alleged only non-infringement, and raised invalidity based upon the on-sale

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bar in its factual background section of the answer, but did not specifically allege invalidity based upon prior art or anticipation. However, the issue was disclosed through discovery and expert discovery. Moreover, Plaintiff specifically listed the issues of invalidity based upon prior art and invalidity based upon failure to disclose best mode in its own portion of the pretrial stipulation. Joint Pretrial Stipulation at p. 16 [DE 366]. The Local Rules of this Court state that the pretrial stipulation and the pretrial conference record shall control the course of the trial. Rule 16.1.G of the Local Rules for the United States District Court for the Southern District of Florida; seealso Pulliam v. Tallapoosa County Jail 185 F.3d 1182, 1185 (11th Cir. 1999); Kona Technology Corp. v. Southern PacificTransp. Co., 225 F.3d 595, 604 (5th Cir. 2000).

This Court concludes that the defense of invalidity based upon prior art is in the case as pan of the trial to begin on October 8, 2003. Plaintiff has been on notice that this has been an issue in the case for some time, and discovery has been exchanged on this issue. As a result, Plaintiff cannot claim surprise or prejudice.

Accordingly, it is ORDERED AND ADJUDGED as follows:

1. Plaintiffs Expedited Motion pursuant to Rule 54(b) for Final Judgment as to Counts II, III, IV and VI and to stay trial [DE 444] is hereby DENIED in its entirety;

2. Plaintiffs Motion for Expedited Briefing Schedule [DE 453] is herebyDENIED as moot;

3. Plaintiffs Expedited Motion to Continue Trial pursuant to Rule 15(b), or in the alternative, Motion to Deny Defendants’ Request to Amend Answers and Affirmative

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4. Defenses [DE 452] is hereby DENIED in its entirety.

DONE AND ORDERED

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