United States District Court, D. Minnesota
J. Niederluecke, Esq and Fredrikson & Byron, PA, counsel
A. Davenport, Esq., and Winthrop & Weinstine, PA, counsel
S. Doty, Judge United States District Court
matter is before the court upon the motion of petitioner
Arkwright Advanced Coating, Inc. for relief from judgment.
Based on a review of the file, record, and proceedings
herein, and for the following reasons, the court grants the
motion in part.
background of this matter is fully set forth in the
court's June 2, 2015, order granting respondent MJ
Solutions GmbH's motion to confirm arbitration award. The
court recites only those facts necessary to resolve the
underlying arbitration award, confirmed by the court,
includes the following injunctive relief:
[Arkwright] is hereby permanently enjoined from making,
using, or selling, its dark transfer products, which are
hereby deemed ‘Covered products' under the License
Decl. Ex. B, at 34. The parties appear to agree that the
injunction is limited to products subject to MJ
Solutions' patents covered by the license agreement.
According to Arkwright, the relevant patents expire on March
13, 2017. Arkwright therefore requests that the court vacate
the injunction effective March 14,
seeks relief under Fed.R.Civ.P. 60(b)(5), which provides that
a court “may relieve a party from a final judgment,
order, or proceeding” if applying it
“prospectively is no longer equitable.”
“Because an injunction, whether right or wrong, is not
subject to impeachment in its application to the conditions
that existed at its making, appellants must identify changed
circumstances that shift the equitable balance in their favor
under Rule 60(b)(5).” Wells Fargo Bank, N.A. v. WMR
e-PIN, LLC, 653 F.3d 702, 715 (8th Cir. 2011) (internal
quotation marks and citation omitted).
Solutions objects to the motion, arguing that the judgment
should not be disturbed because Arkwright could have and
should have raised this issue sooner. MJ Solutions also
argues that there are additional patents relevant to the
injunction that do not expire until 2020 or later, which
render the injunction viable well after March 13, 2017.
Arkwright could have raised this issue sooner, the court is
persuaded that equity demands at least some limitation on the
injunctive relief awarded. The law is clear, and MJ Solutions
does not dispute, that “a district court cannot enjoin
infringement of an expired patent.” Allan Block
Corp. v. Cty. Materials Corp., 634 F.Supp.2d 979, 990
(D. Minn. 2008) (citing Lans v. Digital Equip.
Corp., 252 F.3d 1320, 1328 (Fed. Cir. 2001); see
also Kearns v. Chrysler Corp., 32 F.3d 1541, 1550 (Fed.
Cir. 1994) (“[W]hen the rights secured by a patent are
no longer protectable by virtue of expiration or
unenforceability, entitlement to injunctive relief becomes
moot because such relief is no longer available.”);
Metabolite Labs., Inc. v. Lab. Corp. of Am.
Holdings, No. 99-870, 2007 WL 4322295, at *1 (D. Colo.
Dec. 7, 2007) (holding that the permanent injunction
“automatically dissolved” once the underlying
patent expired). It would be inequitable for the court to
conclude that the injunction should remain in place as to the
soon-to-be expired patents when the law definitively
establishes the contrary. Under the circumstances,
Arkwright's failure to raise the issue sooner, while not
ideal, is excusable.
Solutions' second point, however, the court is concerned
that vacating the injunction as a whole would be an overly
broad remedy. MJ Solutions claims that there are other
patents underlying the injunction that do not expire until
2020 or later. Although Arkwright disagrees, neither party
submits sufficient information to allow the court to resolve
the issue. As a result, the court will narrowly tailor
Arkwright's relief by limiting the injunction to all
applicable valid patents. This means that, as of March 14,
2017, Arkwright will not be enjoined from activity based ...