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M. EAGLES TOOL WAREHOUSE, INC. v. FISHER TOOLING CO.

May 31, 2002

M. EAGLES TOOL WAREHOUSE, INC. D/B/A S&G TOOL AID CORP.
V.
FISHER TOOLING COMPANY, INC., D/B/A ASTRO PNEUMATIC TOOL COMPANY AND STEPHEN FISHER, DEFENDANTS. FISHER TOOLING COMPANY, INC. D/B/A ASTRO PNEUMATIC TOOL COMPANY, COUNTERCLAIMANT, V. M. EAGLES TOOL WAREHOUSE, INC. D/B/A S&G TOOL AID CORP., AUTOMOTIVE NORTHERN WAREHOUSE, INC., COUNTERCLAIM DEFENDANTS.



The opinion of the court was delivered by: Joseph A. Greenaway, Jr. United States District Judge

  OPINION

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 504.

In addition, this Court granted S&G's summary judgment motion as to its § 43(a) Lanham Act claim.*fn2 Id. at 505-07. In that claim, S&G alleged that by marking its eraser wheels as covered under the `914 patent or as "patent pending," Astro deceived the consumer market, in violation of the Lanham Act. Id. In granting S&G's claim, this Court noted that Astro's motivation and intent did not affect the Court's analysis under the Act because "there is no requirement under the Lanham Act that a false representation be made willfully or with intent to deceive. A mistake is not a defense to an action under [the Lanham Act]." Id. at 506 (alteration in original) (citations omitted).

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 Procedure 56(c)

In its motion for summary judgment, pursuant to FED. R. Civ. P. 56 (c), Astro 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 12(b)(2)

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 allowable under 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, ...


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