Focus Products Group International, LLC v. Kartri Sales Company, Inc.

Background

The plaintiffs filed the original complaint in 2015. The case proceeded through several amended complaints, motions to dismiss, discovery, claim-construction proceedings, cross-motions for summary judgment, reconsideration motions, and pretrial submissions. The operative complaint was the Fourth Amended Complaint filed in 2017.

On May 5, 2021, defendants Kartri Sales Company, Inc. and Marquis Mills, International, Inc. asked for permission to file a new motion to dismiss all patent claims under Federal Rule of Civil Procedure 12(b)(1), which concerns subject-matter jurisdiction. Alternatively, they sought permission to supplement their motions in limine, which are pretrial motions asking the court to limit evidence or arguments at trial.

The proposed motion was based on Zahner Design Group, Ltd.’s alleged lack of patent rights when the lawsuit began in 2015. Defendants argued that Zahner’s later assignment of the patent rights, recorded on March 16, 2018, did not cure the alleged defect. In the alternative, defendants sought to limit plaintiffs’ damages to sales occurring on or after that assignment date.

Court’s Analysis

The court explained that the proposed defense did not concern subject-matter jurisdiction. Instead, it concerned statutory standing—the statutory requirement that a party have the right to seek relief under the patent laws—and operated as an affirmative defense. The court stated that whether a plaintiff possesses all substantial rights in a patent does not determine the district court’s subject-matter jurisdiction.

The court further held that defendants had forfeited the defenses by failing to raise them at the required earlier stages. Defendants had not asserted them in their earlier motions to dismiss, answers, or counterclaims. They also did not raise them during the years after the March 2018 assignment, during discovery, in summary-judgment briefing, or in the Joint Pretrial Order.

The court found that defendants had not explained their delay and had raised the issues only at the last minute, after pretrial motions had been submitted. Because the defenses had not been timely asserted, the court would not allow defendants to introduce them at that stage.

Ruling

The court held that defendants had forfeited the proposed statutory-standing and assignment-based damages defenses. It denied defendants leave to file an additional motion to dismiss or motion in limine. The order did not decide the patent claims on their merits; it addressed whether defendants could raise these defenses at that point in the litigation. Judge Paul A. Engelmayer stated that the court would separately resolve the pending motions in limine.