United States District Court, D. New Jersey, Camden Vicinage
Rockwell Automation, Inc. Plaintiffs,
Radwell International, Inc., Defendants.
B. KUGLER, UNITED STATES DISTRICT COURT JUDGE
the Court in this action involving, among other things,
trademark infringement, is the motion [“the
motion”] of plaintiff Rockwell Automation
[“Rockwell”] (ECF Doc. 314) under Federal Rule of
Civil Procedure [“Fed. R. Civ. Proc.” or
“Rule”] 56(a) for summary judgment on Counts
and VII‐IX of its second amended complaint (ECF Doc.
140) against defendant Radwell International, Inc.
[“Radwell”], The COURT HAVING
REVIEWED the parties’ submissions without a
hearing as endorsed by Rule 78.1 (b), and for the reasons
below, and for good cause shown, The Court
DENIES plaintiff’s motion for summary judgment
as to Counts I, V, and VII‐ IX of its second amended
appropriate Order accompanies this Opinion.
Background and Procedure
follows is an abridged version of the lengthy procedural
history in this action‐‐ with which the parties
will be aware-that focuses on information relevant to this
motion. Plaintiff Rockwell makes and sells a large number of
products for a wide variety of uses in industrial automations
systems. Safety and reliability of these parts are of
paramount importance not only to customers, but to Rockwell
as a manufacturer to minimize quality problems and/or
products liability claims. All of Rockwell’s products
bear one or more of its U.S. registered trademarks, which
Rockwell asserts are source identifiers to its U.S. customers
of its warranty, quality control measures, and customer
support for each of its products sold in the U.S.
July 2015, Rockwell initiated this action against defendant
Radwell. On 16 February 2016, it filed a first amended
complaint and on 28 March 2017 a second amended complaint
[“the complaint”], which is the one that controls
here. The complaint has the following claims relevant to the
motion: trademark infringement (Count I), statutory unfair
competition (Count V), tortious inference with contract and
aid and abetting thereof (Counts VII and VIII) and aiding and
abetting fraud (Count IX).
is suing Radwell because it alleges Radwell has been selling
in the United States certain products bearing Rockwell
trademarks but which are unauthorized and unlawful gray
goods. Since Radwell is not an authorized dealer of Rockwell
goods in the U.S., those goods Radwell has sold in the U.S.
[“Radwell goods”] have entered and/or been sold
in the U.S. without Rockwell’s warranty, quality
control and customer support. As unauthorized gray goods
bearing Rockwell’s trademarks, Radwell goods appear
identical to U.S.‐authorized Rockwell goods, but lack
their quality benefits and Rockwell alleges are therefore
inferior. Rockwell further alleges the Radwell goods confuse
the public as to their source and quality and thereby
infringe Rockwell’s trademarks and are consequently
also alleges that, in order to get around that Radwell was
not an authorized U.S. distributor of Rockwell goods, Radwell
committed fraud by creating a purchasing network of third
party agents that bought Rockwell goods from Rockwell
authorized distributors and sold them to Radwell. Thus, the
Rockwell distributors did not know they sold goods intended
for Radwell. Radwell in turn re‐sold the goods in the
U.S. without authorization from Rockwell. Rockwell alleges
Radwell deceived its authorized distributors to breach their
distributorship agreements. Rockwell further alleges such
deception constitutes fraud, tortious interference in the
contractual relationships with its authorized distributors,
and unfair competition under New Jersey law.
September 2017, Rockwell petitioned the International Trade
Commission [“ITC”] to institute an investigation
of several respondents including Radwell pursuant to 19
U.S.C. §1337 [“the investigation” or
“§337 investigation”], In the ITC
petition, Rockwell alleged the same claims as in the
complaint before this Court. On 10 October 2017, the ITC
instituted an investigation into Rockwell claims, and, in
response to Radwell’s motion to stay this litigation,
on 1 November 2017, the Court ordered the stay of all
discovery in this action until the related ITC proceedings
July 2018, Radwell voluntarily entered into a consent order
stipulation with the ITC by which Radwell agreed it would
stop selling, importing, and selling for import any goods
bearing Rockwell marks. This meant the investigation
effectively ended as to Radwell. On 20 July 2018, the ITC
Administrative Law Judge [“ALJ”] issued an
initial determination, which formally approved
Radwell’s consent stipulation, constituted a consent
order and formally terminated the investigation as to
Radwell. On 15 August 2018, the Commission in full accepted
Radwell’s consent stipulation, and the consent order
with the ITC became effective. Between institution of the
investigation and its termination as to Radwell, Rockwell
alleges extensive and expensive discovery had been conducted,
which disrupted the parties’ business and concluded
with the preparation of complex, lengthy pre‐hearing
briefs, all of which efforts were rendered moot and
irrelevant as to Radwell’s prior activities because of
the consent order.
February 2019, Rockwell filed this motion; the opposition and
reply papers were later timely filed.
argues the consent order that Radwell concluded with the ITC
[“the consent order”]-by which Radwell agreed to
stop selling, importing, or selling for import in or to the
United States goods that infringed Rockwell’s
registered marks and by which the investigation as to
Radwell’s unlawful activities under §337
terminated-constitutes a final determination of the trademark
infringement, tortious interference, and fraud claims before
the ITC. ECF Doc. 314‐1:10. Rockwell also argues Third
Circuit jurisprudence regarding the finality of consent
orders applies to the Counts reviewed in this motion. Thus,
plaintiff argues in the Third Circuit, the ITC consent order
must be regarded as a final determination against Radwell and
necessarily and finally resolves Counts I, V, and VII of the
second, amended complaint (ECF Doc. 140) because these are
the very same claims examined in the investigation.
Id. at 13. Accordingly, the ITC consent order
precludes further legal determination of these Counts by this
Court. Id. at 11‐12.
argues the ITC consent order can never be considered final
because of a plain language interpretation of the Federal
Regulations governing ITC consent orders in §337
investigations. ECF Doc. 337:13‐14. Moreover, the
consent order as to Radwell was agreed to and executed by the
ITC before the ALJ issued any fact finding or initial
determination as to the Radwell. Id. at 20‐22.
Therefore, the consent order simply terminated the
investigation before any legal or factual determinations were
made. Id. Thus, the consent order cannot logically
confer claim preclusion as to any of the Counts in the
complaint as there is no legal finding that can preclude
them. Id. at 15.
Summary Judgment Generally
judgment is appropriate “if the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with affidavits, if any, show that there is no genuine issue
as to any material fact and that the moving party is entitled
to judgment as a matter of law.” Fed. R. Civ.
P. 56(c). An issue is “genuine” if the
evidence is such that a reasonable jury could return a
verdict for the non‐moving party. Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A factual
dispute is “material” if it might affect the
outcome of the case under governing law. Id.
movant bears the initial burden of proof to present those
portions of the record it believes demonstrate the absence of
a genuine issue of material fact. Celotex Corp. v.
Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d
265 (1986). If the movant makes this showing, the burden
shifts to the non‐moving party to offer evidence
establishing the existence of a genuine dispute that compels
a trial. Id. at 324. Specifically, the
non‐movant “must set forth specific facts showing
that there is a genuine issue for trial” (Fed. R.
Civ. P. 56(e); Celotex, 477 U.S. at 324)
through affidavits or otherwise as provided by Rule 56 and
must “identify those facts of record which would
contradict the facts identified by the movant.”
Port Auth. of N.Y. and N.J. v. Affiliated FM Ins.
Co., 311 F.3d 226, 233 (3d Cir. 2002). If the
non‐movant fails to do so, the Court must grant summary
judgment. Big Apple BMW v. BMW of North America, 974
F.2d 1358, 1363 (3d Cir.1992). The evidence introduced to
defeat or support a motion for summary judgment must be
capable of being admissible at trial. Callahan v. AEV,
Inc., 182 F.3d 237, 252 n. 11 (3d Cir.1999) (citing
Petruzzi's IGA Supermarkets, Inc. v.
Darling‐Delaware Co., 998 F.2d 1224, 1234 n. 9 (3d
evaluating whether there is a genuine dispute of material
fact, the Court considers all facts and ambiguities in the
light most favorable to the non‐moving party
(Anderson v. Liberty Lobby,477 U.S. 242,
255; Burton v. Teleflex Inc.,707 F.3d 417, 425 (3d
Cir.2013)) and also draws all reasonable inferences in their
favor. (Burns v. Pa. Dep’t of Corr., 642 F.3d
163, 1703d Cir.2011)). However, the Court determines not
“the truth of the matter, ” but whether a genuine
dispute of material fact necessitates a trial.
Anderson, 477 U.S. at 242; Petruzzi's IGA
Supermarkets, 998 F.2d at 1230. The Court ...