United States District Court, D. Minnesota
Harold A. Barza, Quinn Emanuel Urquhart & Sullivan, LLP, and Kevin D. Conneely and Katherine A. Moerke, Stinson Leonard Street LLP, appeared for Moldex Metric, Inc.
Lawrence B. Friedman and Leah Brannon, Cleary Gottlieb Steen & Hamilton LLP, and Wendy J. Wildung, Faegre Baker Daniels LLP, appeared for 3M Company and 3M Innovative Properties Company.
JOAN N. ERICKSEN, District Judge.
Approximately one year after the dismissal of an action for patent infringement brought against Moldex Metric, Inc., by 3M Company and 3M Innovative Properties Company, Moldex Metric brought this action against 3M Company and 3M Innovative Properties Company for monopolization and attempted monopolization, malicious prosecution, and unfair competition under the California Business and Professions Code. The action is before the Court on 3M Company and 3M Innovative Properties Company's Motion to Dismiss the Complaint. For the reasons set forth below, the Court denies the motion.
A. Civil No. 12-611
In March 2012, 3M Company and 3M Innovative Properties Company (collectively, 3M) sued Moldex Metric for patent infringement. Complaint for Patent Infringement, 3M Co. v. Moldex-Metric, Inc., Civil No. 12-611 (D. Minn. Mar. 8, 2012). 3M claimed that Moldex Metric's BattlePlug earplug infringed U.S. Patent No. 6, 070, 693 (filed Jan. 20, 1999) and that Moldex Metric's M-series earmuffs infringed U.S. Patent No. 7, 036, 157 (filed June 15, 2000). Moldex Metric denied 3M's infringement claims and asserted counterclaims for declarations of noninfringement and invalidity with respect to each patent.
In November 2012, the parties filed a joint claim construction statement. The parties asked the Court to schedule a claim construction hearing to interpret the following terms in the '693 Patent: (1) "a first end" and "said first... end"; (2) "a second end" and "second end"; (3) "channel extending from said first and second ends to said center of said cylindrical body"; (4) "acoustic filter"; (5) "first acoustic filter and a second acoustic filter, " "first and second acoustic filters, " and "acoustic filters"; (6) "each of said first and second filters being in communication with one of said first and second ends"; and (7) "cylindrical body." For each claim term, 3M stated that it did "not believe that construction... is necessary" and that, "[i]f the Court believes construction is necessary, ... the plain and ordinary meaning of the term or phrase should apply." Moldex Metric offered a construction of each claim term. The Court declined to hold a claim construction hearing. Instead, the Court directed that issues of claim construction would be considered in connection with dispositive motions or trial.
In January 2013, Moldex Metric moved for summary judgment of noninfringement of the '693 Patent. In February 2013, 3M moved for summary judgment of infringement of the '157 Patent and for summary judgment on Moldex Metric's affirmative defense of governmental immunity. By early March 2013, the motions were fully briefed. They were scheduled to be heard on March 21, 2013.
The parties disputed the issue of infringement of the '693 Patent, which is entitled "Hearing Protector Against Loud Noise." The patent has one independent claim, which recites:
1. A hearing protector for selectively or automatically reducing noises having intensities up to 190 dB, the hearing protector being intended to be sealingly inserted into an auditory canal of a user, the hearing protector comprising:
a cylindrical body having a center, a first end and a second end;
a channel extending from said first and second ends to said center of said cylindrical body; and
said channel containing a first acoustic filter and a second acoustic filter, each of said first and second filters being in communication with one of said first and second ends.
In its motion for summary judgment of noninfringement of the '693 Patent, Moldex Metric argued that the '693 Patent requires an earplug with two insertable ends, a channel opening to the outside of the earplug at the center of the earplug, and two acoustical filters, and that the BattlePlug lacks each feature.
The parties did not dispute the issue of infringement of the '157 Patent, which is entitled "Method of Producing a Hood, and a Hood Produced According to the Method." Moldex Metric argued that it was "premature (and unnecessary) to enter an interlocutory order of infringement" because Moldex Metric did "not intend to defend 3M's claims based on the absence of infringement" of the '157 Patent. Instead, Moldex Metric maintained that the '157 Patent was invalid because Moldex Metric had invented the accused products years before the application for the patent was filed.
By letter dated March 15, 2013, 3M informed the Court that 3M had provided to Moldex Metric a covenant not to sue with respect to the '693 Patent. According to 3M, the covenant "effectively ended" all claims related to the '693 Patent. 3M represented that the parties were discussing the form of appropriate documents for dismissal and that 3M would file a motion under Rule 41 of the Federal Rules of Civil Procedure if the parties failed to agree to the terms of a stipulation. 3M also stated that a hearing on its motion for summary judgment with respect to the '157 Patent was not necessary, that Moldex Metric wished to be heard on the motion, and that Moldex Metric maintained the hearing should be continued in light of the covenant not to sue with respect to the '693 Patent. The Court cancelled the March 21 hearing.
After the parties had failed to agree to the terms of a stipulated dismissal of the claims related to the '693 Patent, 3M moved to dismiss its claim of infringement of the '693 Patent with prejudice and to dismiss Moldex Metric's counterclaims related to the '693 Patent, as well as the affirmative defense of governmental immunity, without prejudice. Although Moldex Metric did not oppose the motion, it wanted to avoid waiving any rights it may have as a result of having to defend against 3M's claim of infringement of the '693 Patent.
By letter dated May 17, 2013, Moldex Metric informed the Court that it had received from 3M a covenant not to sue with respect to the '157 Patent. Two days before 3M's motion to dismiss was scheduled to be heard, the parties filed a letter in which they agreed that 3M's claims with respect to the '157 Patent should be dismissed with prejudice and that Moldex Metric's counterclaims with respect to the '157 Patent should be dismissed without prejudice. They remained unable to agree to the terms of a stipulated dismissal. The Court cancelled the hearing, dismissed 3M's infringement claims with prejudice, dismissed Moldex Metric's counterclaims and affirmative defense of governmental immunity without prejudice, and entered judgment. Moldex Metric did not seek an award of attorney fees and costs.
B. Civil No. 14-1821
Approximately one year after the dismissal of Civil No. 12-611, Moldex Metric brought this action, Civil No. 14-1821, against 3M. A summary of Moldex Metric's complaint appears in the following paragraphs.
Nature of trade and commerce
"Non-linear" or "selective attenuation" earplugs purchased and used by the U.S. military are at issue in this case. In the United States, the military purchases the vast majority of non-linear earplugs. The military may purchase them if they meet certain standards. By using a sound channel that has various constrictions and openings for the passage of sound from the exterior to a wearer's ear canal, non-linear earplugs block or attenuate sounds of different amplitude and frequency to differing degrees. Soldiers wear the earplugs to protect ...