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Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp.

Citations: 856 F. Supp. 2d 1136; 2012 WL 1415341; 2012 U.S. Dist. LEXIS 60114Docket: Case No. SACV 02-578 AG (ANx)

Court: District Court, C.D. California; April 20, 2012; Federal District Court

Narrative Opinion Summary

The case involves a patent infringement dispute between two cement manufacturing corporations over a rapid-hardening cement patent. The plaintiffs accused the defendants of misappropriation and infringement of a patent originally filed by one of the plaintiffs. After a jury failed to reach a verdict in a four-week trial, the Court granted the defendants' motions for judgment as a matter of law on the grounds of shop right, laches, and equitable estoppel. The Court found that the defendants held a shop right in the patent, as the invention was developed using their resources. Plaintiffs' claims were barred by laches due to unreasonable delays that prejudiced the defendants, and they were equitably estopped from pursuing infringement claims after a lengthy period of inaction. The Court also addressed procedural challenges, including the absence of a trial transcript, which complicated the Rule 50 motions. Ultimately, the Court granted the defendants' motions and deemed the remaining motions moot, concluding that the defendants were entitled to judgment as a matter of law due to the plaintiffs' failure to establish credible and timely claims.

Legal Issues Addressed

Equitable Estoppel in Patent Cases

Application: The Court held that Plaintiffs were equitably estopped from asserting infringement claims due to their inaction and Defendants' reasonable reliance on this inaction.

Reasoning: Defendants successfully established a defense of equitable estoppel based on more than a decade of developing, marketing, and selling rapid-hardening cement while reasonably relying on Plaintiffs’ inaction regarding infringement claims.

Federal Rule of Civil Procedure 50(b)

Application: The Court set aside jury findings and granted judgment for Defendants, noting the standard for judgment as a matter of law is not stricter post-mistrial.

Reasoning: Under Federal Rule of Civil Procedure 50(b), a party may renew a motion for judgment as a matter of law following a jury verdict or after a mistrial.

Judgment as a Matter of Law

Application: The Court granted the Defendants' motions for judgment as a matter of law on shop right, laches, and equitable estoppel after a mistrial due to the jury's inability to reach a verdict.

Reasoning: The Court granted the defendants' motions for judgment as a matter of law on the issues of shop right, laches, and equitable estoppel, following a four-week trial where the jury could not reach a verdict.

Laches as a Defense

Application: Plaintiffs' infringement claim was barred by laches due to an unreasonable delay in pursuing the claim, which resulted in prejudice to the Defendants.

Reasoning: Ultimately, the evidence presented at trial led the Court to conclude that the Plaintiffs' infringement claim regarding the '556 patent is barred by laches and equitable estoppel.

Shop Right Doctrine

Application: The Court concluded that Rice and CTS hold a shop right in the '556 patent, as all elements of the patent were developed using Rice's resources, and Kunbargi was employed to create the cement.

Reasoning: In this case, judgment must be granted for Defendants based on two grounds: first, when considering all evidence in favor of Plaintiffs, the only reasonable conclusion is that Rice and CTS hold a shop right in the '556 patent.