United States District Court, D. Minnesota
Kohlhepp, CARLSON CASPERS VANDENBURGH LINDQUIST & SCHUMAN
P.A., for plaintiff.
A. Herriges, FISH & RICHARDSON P.C., for defendants.
MEMORANDUM OPINION AND ORDER ON MAGISTRATE
JUDGE'S ORDER DATED MARCH 2, 2017
R. TUNHEIM Chief Judge United States District Court
December 2015, Plaintiff Polaris Industries Inc.
(“Polaris”) filed an action against Defendants
Arctic Cat Inc. and Arctic Cat Sales Inc. (together
“Arctic Cat”) asserting that Arctic Cat
manufactures and sells side-by-side vehicles that infringe
upon Polaris's U.S. Patent No. 9, 217, 501 (“
‘501 Patent”). (See Compl. ¶¶
8-30, Dec. 22, 2015, Docket No. 1.) In January 2017, Polaris
moved to amend its complaint to add a claim that Arctic Cat
willfully infringed the 501 Patent, providing proposed
paragraphs 31-49 in support. (Pl.'s Am. Mot. to Am.
Pleadings, Ex. 2 ¶¶ 31-49, Jan. 18, 2017, Docket
hearing on the motion to amend, Polaris stated it sought to
add a claim only for post-lawsuit (or post-patent) willful
infringement, given that the ‘501 Patent was issued on
the same day that Polaris filed the patent infringement
action. (Tr. of Mot. to Am. Pleadings Hr'g at 4:16-18,
5:8-13, 24:3-4, Mar. 13, 2017, Docket No. 126.) However,
Polaris also asserted during the hearing that Arctic
Cat's pre-patent conduct was relevant to a post-patent
willfulness claim as a matter of law. (Id. at
the hearing, United States Magistrate Judge Franklin L.
issued an order (“Order”) granting in part and
denying in part Polaris's motion to amend its pleadings
to add a claim for post-lawsuit willful infringement. (Order
at 1, Mar. 2, 2017, Docket No. 120.) Specifically, the Order
granted “Polaris leave to amend its Complaint to add a
claim for willful infringement insofar as it seeks to add
proposed paragraphs 31- 37, 45-46, 48-49, and the additional
amendments to the prayer for relief.” (Id. at
6.) The Order denied Polaris's motion to add proposed
paragraphs 38-44 and 47, finding that those allegations were
“conclusory, ” (id. at 4-5), and that
proposed paragraphs 38-44 which related to conduct prior to
issuance of the '501 patent, (see id. at 4),
were “not relevant to alleging conduct that occurred
following the issuance of the patent-in-suit, ”
(id. at 6).
does not object to the Order's denial of its motion for
leave to add paragraphs 38-44 and 47 to the complaint.
(Pl.'s Obj. at 3 n.4, Mar. 16, 2017, Docket No. 129.)
However, Polaris “objects to the extent that the Order
might be interpreted as precluding Polaris from relying on
any of Arctic[ Cat]'s pre-patent-issuance conduct,
including copying, in pursuing Polaris's willful
infringement claim.” (Id. at 1-2.)
Cat responds it agrees that pre-issuance conduct may be
evidence used to support a willfulness claim, but that
“Polaris did not adequately plead facts to support a
willfulness claim based on pre-issuance conduct, and has
waived its right to add such allegations by not
appealing” the Order regarding that point. (Defs.'
Resp. at 2, Mar. 30, 2017, Docket No. 135.)
the parties agree that pre-patent conduct may, as a matter of
law, support a willfulness claim. The sole issue is whether
Polaris waived its ability to introduce facts about Arctic
Cat's pre-issuance conduct because Polaris did not object
to the Order's determination that those proposed
paragraphs were “conclusory.”
only case that Arctic Cat offered to support its position
regarding waiver is inapposite. (See id. at 2.) In
Daley v. Marriott International, Inc., the Eighth
Circuit held that it could not review a plaintiff's
“challenge to the merits of the magistrate judge's
order denying [a] nondispositive pretrial motion because [the
plaintiff] failed to file any objections to such order with
the district court.” 415 F.3d 889, 893 n.9
(8th Cir. 2005). However, in this case, Polaris
argued before the Magistrate Judge that Arctic Cat's
pre-patent conduct was relevant to its willful infringement
claim and then objected to the Order to the extent it could
be construed to preclude Polaris from relying on such facts
in pursuing the claim. (Pl.'s Obj. at 1-2, 3 n.4.) Thus,
contrary to Arctic Cat's position, Polaris has preserved
its objection with the Court.
Magistrate Judge granted Polaris leave to amend its complaint
to add a willfulness claim, and Polaris may introduce facts
to support that legal claim. Arctic Cat has not offered - and
the Court is not aware of - any authority that holds that a
party must plead all possible facts that may support its
legal claim or risk waiving reliance on those facts. A
pleading must contain enough facts to state a claim for
relief that is “plausible on its face, ” but that
is not the issue here. Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 570 (2007).
the Court will clarify that the Order does not per se
preclude Polaris from seeking to introduce facts about Arctic
Cat's pre-patent conduct that support its willful
infringement claim, and of course, Arctic Cat may object at
the appropriate ...