United States District Court, D. Minnesota
JODI A. SCHWENDIMANN, f/k/a JODI DALVEY Plaintiff,
ARKWRIGHT ADVANCED COATING, INC. Defendant. ARKWRIGHT ADVANCED COATING, INC. Counterclaim Plaintiff,
JODI A. SCHWENDIMANN, f/k/a JODI DALVEY and COOLER CONCEPTS, INC. Counterclaim Defendants.
A. Davenport, Devan V. Padmanabhan, and Michelle E. Dawson,
WINTHROP & WEINSTINE, PA, for Jodi A. Schwendimann and
Cooler Concepts, Inc.
Katherine J. Rahlin, Kurt J. Niederluecke, and Laura L.
Myers, FREDRIKSON & BYRON, PA, for Arkwright Advanced
MEMORANDUM OPINION AND ORDER ON MOTIONS IN
R. TUNHEIM Chief Judge
Jodi Schwendimann brought this action against Arkwright
Advanced Coating, Inc. (“AACI”), alleging that it
infringed on six of Schwendimann's patents. AACI brought
a counterclaim against Schwendimann and her company, Cooler
Concepts, alleging that they infringed on two of AACI's
patents. All of the patents at issue involve image-transfer
sheets that can be used to transfer images onto a colored
base, such as a T-Shirt, by applying heat.
parties have completed discovery. The parties have brought
motions in limine in advance of trial to resolve a number of
evidentiary disputes. The Court issues this order to address
the parties' motions in limine.
companies, NuCoat and Cooler Concepts, manufacture and sell
specialty paper products, including inkjet image transfer
paper or sheets. Schwendimann alleges that AACI's 888 and
889 products infringe on six of Schwendimann's patents:
1. RE41, 623 (the “‘623 Patent”)
2. 7, 749, 581 (the “‘581 Patent”)
3. 7, 754, 042 (the “‘042 Patent”)
4. 7, 766, 475 (the “‘475 Patent”)
5. 7, 771, 554 (the “‘554 Patent”)
6. 8, 703, 256 (the “‘256 Patent”)
Concepts licenses these patents to MJ Solutions, a company
owned in part by Schwendimann. (Decl. of Kurt J. Niederluecke
(“Niederluecke Decl.”) ¶ 24, Sealed Ex. 23,
Sept. 6, 2017, Docket No. 515.)
also produces inkjet image transfer paper or sheets,
including the accused 888 and 889 products. AACI alleges that
Schwendimann's products infringe on two of AACI's
1. 6, 667, 093 (the “‘093 Patent”)
2. 7, 943, 214 (the “‘214 Patent”)
2008, Schwendimann brought an action against AACI's
predecessor-in-interest, Océ (f.k.a. Arkwright, Inc.).
See Complaint, Schwendimann v. Oce Imaging Supplies,
Inc., Civil No. 08-162 (ADM/JSM) (D. Minn. January 16, 2008).
During the pendency of that action, Océ sold its two
patents to AACI and settled with Schwendimann. Schwendimann
joined AACI as a party to the 2008 case in 2011 but
voluntarily dismissed her action without prejudice a month
later. The current case was filed in 2011.
December 12, 2016, the Court issued an order for partial
summary judgment with respect to a number of issues. (Mem.
Op. and Order on Mots. for Summ. J. (“Summ. J.”)
at 38-39, Dec. 12, 2016, Docket No. 439.) Notably, the Court
granted AACI's motion for partial summary judgment with
regard to Schwendimann's infringement of AACI's
‘093 patent. (Id.) The Court also concluded
that Schwendimann may argue her theory of lost profit damages
at trial if she can establish that NuCoat and Cooler
Concepts' profits “flow inexorably” to her.
(Id. at 38.) However, the Court warned that the tax
statuses of NuCoat and Cooler Concepts are insufficient to
establish inexorable flow, and thus Schwendimann must present
“contractual, structural, or historical evidence”
showing that profits in fact flowed to her. (Id.)
SCHWENDIMANN'S MOTIONS IN LIMINE
Non-Infringement Based Upon Own Patents (Schwendimann Motion
moves under Fed.R.Evid. 402 to preclude AACI from presenting
any theory of non-infringement based on its own patents. AACI
does not intend to argue that its own patents give it an
affirmative right to make or use products covered by its
patents. Thus, the Court will grant Schwendimann's
intends to present its own patents as evidence that
AACI's products do not melt below 220 C. The Court finds
that the melting temperature of AACI's products, as
illustrated by AACI's patents, is relevant to the issue
of whether AACI's products infringe on Schwendimann's
patents. Therefore, the Court's order does not prevent
AACI from introducing its patents for purposes of showing
that its products do not melt below 220 C. To reduce any
prejudice that may result from the introduction of AACI's
patents, Schwendimann is entitled to a limiting instruction
that the existence of AACI's patents does not constitute
a defense to infringement of Schwendimann's patents.
The 888 Product's Layers (Schwendimann Motion
moves under Fed.R.Evid. 402 to exclude AACI from presenting
argument or testimony that AACI's 888 Product is a single
layer. Whether the 888 Product is comprised of one or more
layers is a central issue in this litigation and will be
resolved through the presentation of evidence at trial. The
Court will thus deny Schwendimann's motion.
Schwendimann's Lost Profits ...