Focus Prods. Grp. Int'l v. Kartri Sales Co.

Opinion

ORDER

PAUL A. ENGELMAYER, District Judge:

On December 30, 2015, plaintiffs filed the original complaint in this action. Dkt. 1. Over the course of the next year, three amended complaints were filed, as well as counterclaims and motions to dismiss. On July 14, 2016, the Court denied the motions to dismiss in a bench decision. Dkt. 63. On September 29, 2017, following the close of fact discovery, plaintiffs submitted the Fourth Amended Complaint, Dkt. 148, which is the operative complaint in this litigation, and to which the defendants filed answers. On October 12, 2017, defendant Kartri Sales Company, Inc. ("Kartri") filed a new motion to dismiss on the basis of improper venue. Dkt. 149. On November 22, 2017, the Court issued an order denying the motion. Dkt. 164. On July 26, 2018, the Court held a Markman hearing, and issued its ruling on August 9, 2018. Dkts. 193, 198. In 2019 the parties filed cross-motions for summary judgment, which the Court ruled upon in April 2020. Dkts. 243, 253, 273, 297. Both parties then moved for reconsideration, [*3]  and the Court issued two opinions ruling on those motions in May 2020 and January 2021. Dkts. 302, 312.

On January 4, 2021, the Court set a schedule for pretrial submissions. Dkt. 312. The parties jointly requested three extensions, Dkts. 314, 317, 319, which the Court granted. On March 12, 2021, the Court set a briefing schedule for motions in limine, under which opening motions were due by April 15, 2021. Dkt. 320. On April 15, 2021, plaintiffs filed five motions in limine. Dkts. 324-28. Kartri filed 12 motions in limine. Dkts. 330-337, 339, 341, 343, 344. Defendant Marquis Mills, International, Inc. ("Marquis") filed three motions in limine. Dkts. 338, 340, 342. On May 3, 2021, the parties jointly requested an extension until May 21 to respond to the opposing parties' motions in limine, which the Court granted. Dkt. 357.

On May 5, 2021, defendants requested leave to file a motion to dismiss all patent causes of action based on a lack of standing under Federal Rule of Civil Procedure 12(b)(1), or, in the alternative, for leave to supplement its motions in limine. Dkt. 359. As to their proposed motion to dismiss, defendants argue that plaintiff Zahner Design Group, LTD ("Zahner") was "nunc pro tunc assigned all patent rights [*4]  in this litigation" on March 16, 2018, whereas this lawsuit had been initiated in 2015. Defendants argue that Zahner's lack of patent rights at the outset of this case meant that it lacked standing to sue, and that the assignment of those rights after the filing of a lawsuit did not remedy plaintiffs' asserted lack of standing at the time of the filing of the lawsuit. As to the defendants' alternative request for leave to supplement their motions in limine, if the defendants cannot move to dismiss the entire case based on their standing theory, the defendants seek to move to limit plaintiffs' damages—on the same theory—to sales on or after Zahner's assignment of the patent rights on March 16, 2018. The Court directed plaintiffs to file a letter in response. Dkt. 361. In their response, plaintiffs set out 10 distinct reasons why the Court should not grant the defendants the leave they seek. Dkt. 362 ("Pl. Response").

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