United States District Court, E.D. Wisconsin
METALCRAFT OF MAYVILLE, INC. d/b/a Scag Power Equipment, Plaintiff,
THE TORO COMPANY and EXMARK MANUFACTURING CO., INC., Defendants.
DECISION AND ORDER
ADELMAN DISTRICT JUDGE
of Mayville, Inc. (d/b/a Scag Power Equipment)
("Scag"), brings this action in federal court
against the Toro Company and Exmark Manufacturing Co., Inc.,
alleging infringement of its patent on an operator suspension
system for commercial riding lawnmowers. On August 1, 2016,
District Judge Pamela Pepper signed an order on behalf of
Senior District Judge Rudolph T. Randa granting Scag's
motion for a preliminary injunction precluding defendants
"from making, using, selling, and offering to sell
lawnmowers equipped with platform suspension systems that
infringe Scag's patent .... on the condition that Scag
posts adequate security." ECF No. 30, at 1.
promptly filed a notice of appeal and an expedited motion to
stay the injunction pending the appeal. ECF Nos. 31-32. Scag
filed an expedited motion to set an initial bond and enter
the preliminary injunction order. ECF No. 37. On August 18, I
denied defendants' motion to stay the injunction, set the
bond at $1, 000, 000, and entered the preliminary injunction
order. ECF No. 47. On August 23, Scag posted the bond. ECF
No. 53. On October 13, the Court of Appeals for the Federal
Circuit denied defendants' motion to stay the preliminary
injunction pending appeal. ECF No. 59.
November 2, defendants moved to dissolve the preliminary
injunction and, recognizing that I lack jurisdiction to do so
while their appeal is pending, for an indicative ruling,
pursuant to Federal Rule of Civil Procedure 62.1, "as to
whether (if jurisdiction were returned to this Court) [I]
would dissolve the preliminary injunction." Defs.'
Mem., ECF No. 65, at 1. Rule 62.1(a) states,
If a timely motion is made for relief that the court lacks
authority to grant because of an appeal that has been
docketed and is pending, the court may:
(1) defer considering the motion;
(2) deny the motion; or
(3) state either that it would grant the motion if the court
of appeals remands for that purpose or that the motion raises
a substantial issue.
argue that they have discovered new prior art and that the
U.S. Patent and Trademark Office has granted their request to
reexamine all of the asserted patent claims at issue, both of
which undermine the likelihood that Scag will succeed on the
merits, which justifies reconsideration of whether a
preliminary injunction is appropriate. Defendants' motion
is not yet fully briefed, so I will not decide it today.
Instead, I consider Scag's expedited motion to strike
defendants' motion. ECF No. 67.
argues that defendants' motion is procedurally improper.
According to Scag, a party cannot file "'an
independent, free-standing Rule 62.1 motion, asking the
district court, in the abstract as it were, to advise the
court of appeals what it would do if the court of appeals
were to remand the case.'" Id. at 2
(quoting Medgraph, Inc. v. Medtronic, Inc., 310
F.R.D. 208, 210 (W.D.N.Y. 2015)). Accordingly, Scag argues,
Rule 62.1 requires a separate motion for relief that was
filed before defendants appealed. Defendants argue
that their motion is not "a 'freestanding Rule 62.1
motion'" but a combined motion for relief
(dissolution of the preliminary injunction) and for an
indicative ruling under Rule 62.1. Defendants further argue
that Rule 62.1 does not require that the underlying motion
for relief be filed before the notice of appeal, as such an
interpretation "is contrary to the rule and would defeat
[its] entire purpose." Defs.' Opp'n, ECF No. 68,
that defendants' motion is procedurally sufficient. It
requests relief that I cannot currently grant because of
defendants' pending appeal and asks, instead, that I
grant an indicative ruling under Rule 62.1. It is clear to me
(and seems to be clear to the parties) what underlying relief
defendants are requesting; the basis for their request; and
why, under the circumstances, I lack the authority to grant
that relief. Further, Rule 62.1 does not require that the
motion for relief be filed before the notice of appeal. The
Advisory Committee Notes to Federal Rule of Appellate
Procedure 12.1, governing remand after a district court's
indicative ruling under Rule 62.1, includes the following
hypothetical, which makes this clear:
The district court grants summary judgment dismissing a case.
While the plaintiff's appeal is pending, the
plaintiff moves for relief from the judgment, claiming
newly discovered evidence and also possible fraud by the
defendant during the discovery process. If the district court
reviews the motion and indicates that the motion "raises
a substantial issue, " the court of appeals may well
wish to remand rather than proceed to determine the appeal.
Fed. R. App. P. 12.1 advisory committee notes to 2009
adoption (emphasis added). The Advisory Committee Notes to
that rule also clearly counsel litigants about what to do
"[w]hen relief is sought in the district court
during the pendency of an appeal." Id.
(emphasis added). For these reasons, I will deny Scag's
motion to strike.
requests, in the alternative, "an extension of time
until 21 days after issuance of the Federal Circuit's
decision [on defendants' appeal] to respond to"
defendants' motion. ECF No. 67, at 3. Scag argues that
defendants' appeal has been fast-tracked, the parties
expect a decision before the end of the year, and it would be
a waste of this court's and the parties' resources to
argue and consider defendants' motion now because the
issues it raises "may be mooted or narrowed by the
Federal Circuit." Id. Defendants argue that
granting this extension "defeats the entire purpose of
Rule 62.1, which is for the district court to weigh in on
whether it would grant such a motion if it had jurisdiction
to do so." Defs.' Opp'n, ECF No. 68, at 4. I
agree with defendants. Rule 62.1 is designed to allow a
district court to consider a motion for relief that it cannot
grant for want of jurisdiction due to a pending appeal. I
may, under Rule 62.1, "defer considering the motion,
" but I am reluctant to do so before the motion is fully
briefed. If the Federal Circuit decides defendants'
appeal before I decide defendants' motion or issue ...