Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Schwendimann v. Arkwright Advanced Coating, Inc.

United States District Court, D. Minnesota

September 25, 2017

JODI A. SCHWENDIMANN, f/k/a JODI DALVEY Plaintiff,
v.
ARKWRIGHT ADVANCED COATING, INC. Defendant. ARKWRIGHT ADVANCED COATING, INC. Counterclaim Plaintiff,
v.
JODI A. SCHWENDIMANN, f/k/a JODI DALVEY and COOLER CONCEPTS, INC. Counterclaim Defendants.

          David 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 Coating, Inc.

          MEMORANDUM OPINION AND ORDER ON MOTIONS IN LIMINE

          JOHN R. TUNHEIM Chief Judge

         Plaintiff 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.

         The 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.

         BACKGROUND

         I. FACTUAL BACKGROUND

         Schwendimann's 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”)

         Cooler 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.)

         AACI 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 patents:

1. 6, 667, 093 (the “‘093 Patent”)
2. 7, 943, 214 (the “‘214 Patent”)

         II. PROCEDURAL BACKGROUND

         In 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.

         On 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.)

         ANALYSIS

         I. SCHWENDIMANN'S MOTIONS IN LIMINE

         A. Non-Infringement Based Upon Own Patents (Schwendimann Motion #1)

         Schwendimann 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 motion.

         AACI 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.

         B. The 888 Product's Layers (Schwendimann Motion #2)

         Schwendimann 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.

         C. Schwendimann's Lost Profits ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.