United States District Court, N.D. New York
DOUGLAS J. NASH, ESQ., GABRIEL M. NUGENT, ESQ., JASON C. HALPIN, ESQ., JOHN D. COOK, ESQ., KATHRYN DALEY CORNISH, ESQ., Hiscock, Barclay Law Firm, Syracuse, NY, for the Plaintiff.
KATHRYN R. GRASSO, ESQ., JOSEPH P. LAVELLE, ESQ., ANDREW N. STEIN, ESQ., DLA Piper LLP, Washington, DC, DAVID M. LASCELL, ESQ., ERIKA N.D. STANAT, ESQ., JERAULD E. BRYDGES, ESQ., Harter, Secrest Law Firm, Rochester, NY, for the Defendant.
MEMORANDUM-DECISION AND ORDER
GARY L. SHARPE, Chief District Judge.
On July 5, 2011, plaintiff PPC Broadband, Inc. commenced this patent infringement action against defendant Corning Gilbert Inc. (Compl., Dkt. No. 1.) Pending is, among other things, PPC's motion for summary judgment on collateral estoppel, precluding Gilbert from relitigating the issue of validity of the patents in suit. (Dkt. No. 128.) For the reasons that follow, PPC's motion is granted in part and denied in part.
Both PPC and Gilbert are engaged in the business of designing and manufacturing coaxial cable connectors. ( See generally Compl., Dkt. No. 1.) On July 21, 2000, PPC filed a patent application for a coaxial cable connector, which was approved and a patent issued to PPC on May 6, 2003 as U.S. Patent No. 6, 558, 194 ("194 patent"). ( Id. ¶¶ 1, 23, 24; Dkt. No. 1, Attach. 2.) On January 21, 2003, PPC filed another patent application for a coaxial cable connector, which was approved and a patent issued to PPC on February 1, 2005 as U.S. Patent No. 6, 848, 940 ("940 patent"). (Compl. ¶¶ 1, 26, 27; Dkt. No. 1, Attach. 3.)
PPC alleges that Gilbert has infringed the 194 and 940 patents by making, using, selling, offering for sale, selling, and/or importing coaxial cable connectors, specifically Gilbert's UltraRange and UltraShield series connectors, that infringe on PPC's patents. (Compl. ¶¶ 45-58.)
In a prior action decided in 2003, PPC brought suit against Gilbert in the United States District Court for the Western District of Wisconsin, alleging, as in the present case, infringement of the 194 patent. (Pl.'s Statement of Material Facts (SMF) ¶ 1, Dkt. No. 128, Attach. 25.) In that action, as it does here, Gilbert asserted the invalidity of the 194 patent as an affirmative defense to PPC's infringement claim and also sought a declaratory judgment to that effect. ( Id. ¶ 2.) The parties engaged in discovery and motion practice on the validity of the 194 patent, ( id. ¶¶ 3-5, 7-17), and after Gilbert's motions for summary judgment and judgment as a matter of law at trial were denied, the jury returned a verdict finding that the 194 patent was not invalid, and Gilbert's UltraSeal connectors infringed on it, ( id. ¶¶ 16-20; Dkt. No. 128, Attach. 17 at 2-3).
At the close of the 2003 action, PPC and Gilbert entered into a settlement agreement to resolve outstanding disputes concerning the judgment entered in that case. (Pl.'s SMF ¶ 22.) That agreement provides, among other things, that "Gilbert hereby releases, waives, and discharges PPC with respect to all claims and defenses relating to [the 194 patent], whether known or unknown, that were or could have been brought in the [2003 action]." ( Id. ¶ 23; Dkt. No. 128, Attach. 19.)
On February 1, 2005, the 940 patent was issued to PPC. (Dkt. No. 1, Attach. 3.) On July 5, 2011, PPC commenced the current action against Gilbert, alleging that Gilbert's UltraRange and UltraShield connectors infringe both the 194 and 940 patents. (Compl.) Gilbert again asserts as an affirmative defense, and seeks a declaration, that the 194 and 940 patents are invalid. (Dkt. No. 6 ¶¶ 62, 126, 130.) The parties have engaged in extensive discovery in this case, including on the potential validity or invalidity of the patents in suit. (Pl.'s SMF ¶¶ 27-28.) All of the prior art relied on by Gilbert and its expert witnesses in this case to argue the invalidity of the patents in suit was previously raised in the 2003 action. ( Id. ¶¶ 29-30.)
III. Standard of Review
The standard of review pursuant to Fed.R.Civ.P. 56 is well established and will not be repeated here. For a full discussion of the standard, the court refers the parties to its decision in Wagner v. Swarts, 827 F.Supp.2d 85, 92 (N.D.N.Y. 2011), ...