Civil No. 01-1781 (JRT/FLN).
October 30, 2006
John C. Adkisson, FISH RICHARDSON PC, PA, 60 South Sixth Street, Suite 3300, Minneapolis, MN 55402, for plaintiffs.
Lawrence M. Hadley, HENNIGAN BENNETT DORMAN, 601 Figueroa Street South, Suite 3300, Los Angeles, CA 90017, for defendant.
On September 27, 2001, plaintiffs 3M Innovative Properties Company and Minnesota Mining and Manufacturing Company (collectively "3M") filed this patent infringement lawsuit against defendant Avery Dennison Corporation ("Avery"). On December 22, 2005, the jury in this case found that Avery infringes claims 1 through 5 of 3M's U.S. Patent No. 5,897,930 ("the '930 patent") by making and selling its EZ Series Fleet Marketing Film. The jury rejected all of Avery's invalidity defenses. Based on this verdict, the Court entered Judgment in favor of 3M on December 23, 2005.
On March 17, 2006, the Court granted 3M's motion for a permanent injunction. The injunction enjoined Avery from making, using, selling, offering for sale or importing into the United States Avery's EZ Series Fleet Marketing Film, or any other product no more than colorably different from that product. On April 25, 2006, the Court modified the permanent injunction to cover distributors of Avery's EZ Film. On May 8, 2006, Avery requested that this Court reconsider its entry of a permanent injunction in light of a recent decision from the United States Supreme Court, eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837, 1839 (2006), and the April 10, 2006 decision by the Patent and Trademark Office ("PTO") ordering reexamination of the '930 patent. On September 25, 2006, the Court granted Avery's request to reconsider the permanent injunction in light of the eBay Inc. decision. In another order dated September 25, 2006, the Court vacated March 17 and April 25, 2006 Orders, and re-entered the same injunction after applying the four part test articulated in eBay Inc.
Avery has now again requested leave to file a motion to reconsider the Court's entry of a permanent injunction. Avery argues that reconsideration should be granted because the PTO issued a first office action rejecting as anticipated by the prior art all of the claims of the '930 patent at issue in this case. A motion to reconsider under Local Rule 7.1(g) is the "functional equivalent" of a motion to alter or amend the judgment under Rule 59(e) of the Federal Rules of Civil Procedure. DuBose v. Kelly, 187 F.3d 999, 1002 (8th Cir. 1999). Requests to file such motions are granted "only upon a showing of compelling circumstances." D. Minn. LR 7.1(g).
Specifically, Avery requests reconsideration of the Order dated March 17, 2006. Because the Order dated March 17, 2006 was vacated by this Court's Order dated September 25, 2006, the Court construes Avery's request as one seeking reconsideration of those portions of the Order dated September 25, 2006 that grant 3M's motion for a permanent injunction.
The Court concludes that the PTO's first office action does not warrant reconsideration of the Order. The reexamination proceeding is at its earliest stages, and the PTO has not made a final decision invalidating the claims at issue here. Cf. Standard Havens Prods., Inc. v. Gencor Indus., Inc., 27 U.S.P.Q.2d 1959 (Fed. Cir. 1993) (remanding to the district court with instructions to stay the imposition of the permanent injunction because the PTO had made a final decision to invalidate certain of the claims at issue). 3M now has an opportunity to respond to the PTO's office action, and this will be the first time the PTO will hear 3M's position regarding the prior art references raised by Avery as part of the reexamination. Accordingly, the Court denies Avery's request for reconsideration.
Based on the foregoing, all the records, files, and proceedings herein, IT IS HEREBY ORDERED that defendant Avery's request for leave to file a motion to reconsider portions of the September 25, 2006 Order is DENIED.