The opinion of the court was delivered by: Joseph A. Greenaway, Jr. United States District Judge
These matters come before the Court on motions by
Plaintiff/Counterclaim Defendant M. Eagles Tool Warehouse, Inc. d/b/a S&G
Tool Aid Corp. ("S&G"), Defendant Steven Fisher, in his individual
capacity ("Fisher"), and Defendant/Counterclaim Plaintiff Fisher Tooling
Company, Inc. d/b/a Astro Pneumatic Tool Company ("Astro").*fn1
For the reasons set forth below, this Court: (1) GRANTS Defendant
Fisher's motion to dismiss, pursuant to FED. R. CIV. P. 12(b)(2), for
lack of personal jurisdiction; (2) GRANTS Astro' s motion for summary
judgment as to s tortious interference with contractual relations; (3)
GRANTS Astro's motion for summary judgment as to S&G's false marking
claim, pursuant to 35 U.S.C. § 292; and (4) DENIES Astro's motion for
summary judgment as to S&G's (a) unfair competition claims (both at
common law and pursuant to the New Jersey Fair Trade Act), and (b)
tortious interference with prospective economic advantage claim. This
Court also: (1) GRANTS S&G' s cross-motion for summary judgment as to its
(a) § 43(a) Lanham Act claim, (b) attorneys' fees claim, pursuant to
35 U.S.C. § 292, (c) unfair competition claim (both at common law and
pursuant to the New Jersey Fair Trade Act), and (d) tortious interference
with a prospective business advantage claim; and (2) DENIES S&G's
cross-motion for summary judgment as to its false marking claim.
I. THIS COURT'S PREVIOUS OPINION
In a previous Opinion in this matter, M. Eagles, 68 F. Supp.2d at 504,
this Court concluded that the evidence submitted supported a conclusion
that the inequitable conduct before the Patent and Trademark Office
("PTO") on the part of Fisher and Astro (collectively "Defendants")
rendered the `914 patent unenforceable. This Court stated that because
Defendants had failed to inform the PTO of the existence of its Model 220
driver, it was reasonable to infer that Defendants acted in a manner that
intended to deceive the PTO. Id. at 503-04. Specifically, this Court
observed that Defendants' failure to advise the PTO of the existence of
the Model 220 driver constituted failure to advise that Office of
relevant prior art. Id. at 502. In light of its conclusion that the "914
patent was unenforceable, this Court dismissed S&G's request for a
declaratory judgment of noninfringement and Astro's counterclaims of
contributory infringement and inducement to infringe as moot. Id. at
As to S&G's motion for summary judgment as to its false marking claim,
pursuant to 35 U.S.C. § 292, this Court concluded that S&G failed to
demonstrate that no genuine issue as to a material fact existed
concerning Astro's intent to deceive the consumer public. Id. at 505. As
to S&G's motion for summary judgment on its claim for attorneys' fees,
pursuant to 35 U.S.C. § 285, and motion for sanctions, pursuant to
FED. R. Civ. P. 11,*fn3 this Court concluded that S&G had submitted
insufficient evidence to persuade this Court that it was entitled to
relief as a matter of law. Id. at 507-508.
II. CLAIMS PRESENTED IN THE INSTANT MOTIONS
A. Motions for summary judgment, pursuant to Federal Rule of Civil
In its motion for summary judgment, pursuant to FED. R. Civ. P. 56
requests that this Court: (1) grant summary judgment in its
favor as to S&G's claims for (a) unfair competition (both at common law
and pursuant to the New Jersey Fair Trade Act), and (b) S&G's claims for
tortious interference with prospective economic advantage and tortious
interference with contractual relations, in light of the Federal
Circuit's holding in Zenith Electronics Corporation v. Exzec
Incorporated, 182 F.3d 1340 (Fed. Cir. 1999); (2) dismiss the action, in
its entirety, against Defendant Fisher, pursuant to FED. R. Civ. P. 12
(b)(2), for lack of personal jurisdiction; and (3) grant summary judgment
in its favor with regard to S&G' s false marking claim, pursuant to
35 U.S.C. § 292.*fn4
Conversely, S&G's cross-motion for summary judgment requests that this
Court grant summary judgment in S&G's favor as to: (1) its Lanham Act
claim*fn5 (2)its attorneys' fees claim, pursuant to
35 U.S.C. § 285;*fn6 (3)its false marking claim; and (4) its claims
for unfair competition (both common law and statutory) and tortious
interference with prospective economic advantage.*fn7
B. Defendant Fisher's motion to dismiss for lack of personal
jurisdiction, pursuant to Federal Rule of Civil Procedure
A district court may exercise personal jurisdiction over a nonresident
of the state in which that court sits only to the extent authorized by
the laws of New Jersey. Provident Nat'l Bank v. California Fed. Sav. &
Loan Ass'n, 819 F.2d 434, 436 (3d Cir. 1987). New Jersey's long-arm
statute permits this Court to exercise jurisdiction to the fullest extent
the Constitution of the United States. Advel Corp. v.
McCure, 58 N.J. 264, 268 (1971); N.J. Ct. R. 4:4-4. Therefore, under
usual circumstances, this Court's analysis would focus on whether its
exercise of jurisdiction would comport with the requirements of the Due
Process Clause of the Fourteenth Amendment.
In the instant matter, Defendant Fisher renews a previously filed
motion to dismiss S&G's complaint as to him — as an individual
— for lack of personal jurisdiction, pursuant to Federal Rule of
Civil Procedure 12(b)(2). S&G does not provide argument in opposition to
Defendant Fisher's renewed motion; in fact, S&G consents to the motion.
(Pl.'s Mem. at 31.) This Court, therefore, dismisses S&G's complaint
— in its entirety — to the extent that it seeks relief from
Fisher, in his individual capacity.*fn8
C. Standard of review for a motion for summary judgment, pursuant to
Federal Rule of Civil Procedure 56(c)
Summary judgment is appropriate under FED. R. CIV. P. 56(c) when the
moving party demonstrates that there is no genuine issue of material fact
and the evidence establishes the moving party's entitlement to judgment
as a matter of law. Celotex Corp. v. Catrett, 477 U.S. 317, 322-23
(1986); Orson, Inc. v. Miramax Film Corp., 79 F.3d 1358, 1366 (3d Cir.
1996). In making this determination, the Court must draw all reasonable
inferences in favor of the nonmovant. Hullett v. Towers, Perrin, Forster
& Crosby, Inc., 38 F.3d 107, 111 (3d Cir. 1994); Nat'l State Bank v.
Fed. Reserve Bank of N.Y., 979 F.2d 1579, 1581 (3d Cir. 1992).
Once the moving party has satisfied its initial burden, the party
opposing the motion must establish that a genuine issue as to a material
fact exists. Jersey Cent. Power & Light Co. v. Lacey Township,
772 F.2d 1103, 1109 (3d Cir. 1985). The party opposing the motion for
summary judgment cannot rest on mere allegations and instead must present
actual evidence that creates a genuine issue as to a material fact for
trial. Anderson v. Liberty Lobby. Inc., 477 U.S. 242, 248 (1986); Siegel
Transfer, Inc. v. Carrier Express, Inc., 54 F.3d 1125, 1130-31 (3d Cir.
1995). "[U]nsupported allegations in [a] memorandum and pleadings are
insufficient to repel summary judgment." Schoch v. First Fid.
Bancorporation, 912 F.2d 654, 657 (3d Cir. 1990); see also FED. R. Civ.
P. 56(e) (requiring nonmoving party to "set forth specific facts showing
that there is a genuine issue for trial").
If the nonmoving party has failed "to make a showing sufficient to
establish the existence of an element essential to that party's case, and
on which that party will bear the burden of proof at trial, . . . there
can be `no genuine issue of material fact,' since a complete failure of
proof concerning an essential element of the nonmoving party's case
necessarily renders all other facts immaterial." Katz v. Aetna Cas. &
Sur. Co., 972 F.2d 53, 55 (3d Cir. 1992) (quoting Celotex, 477 U.S. at
322-23). In determining whether there are any issues of material fact,
the Court must resolve all doubts as to the existence of a material fact
against the moving party and draw all reasonable inferences —
including on issues of credibility — in favor of the non-moving
party. Watts v. Univ. of Del., 622 F.2d 47, 50 (3d Cir. 1980).
D. S&G's cross-motion for summary judgment as to its Lanham Act claim
1. The effect of Zenith on this Court's previous analysis of S&G's
Lanham Act claim
In this Court's previous Opinion, it partially granted and partially
denied S&G's motion for summary judgment. Specifically, this Court's
determination that Astro' s actions violated the Lanham Act relied upon
the principle that "there is no requirement under the Lanham Act that a
false representation be made wilfully or with intent to deceive." M.
Eagles. 68 F. Supp.2d at 506 (D.N.J. 1999) (quoting Brandt Consol., Inc.
v. Agrimar Corp., 801 F. Supp. 164, 174 (C.D. Ill. 1992). As a result,
this Court concluded that "[r]egardless of Astro's motivations, ...