United States District Court, E.D. Kentucky, Central Division, Lexington
MEMORANDUM OPINION AND ORDER
DANNY C. REEVES, District Judge.
This matter is pending for consideration of Defendant Bear Archery, Inc.'s motion for partial summary judgment. Having reviewed the parties' arguments, the Court concludes that there are no material issues of fact to be resolved regarding the motion. Further, Bear Archery is entitled to judgment as a matter of law with respect to eight of the nine archery model sights identified in the plaintiff's second Amended Complaint. As a result, Bear Archery's motion will be granted.
Pro se Plaintiff Ben Afshari holds several patents pertaining to archery sights. [ See Amended Complaint, ¶¶ 6-8 describing United States Patent Nos. 6, 725, 854 and 7, 503, 321; see also Exhibits A and B to the Amended Complaint; Record No. 3] According to Afshari, the technology covered by the 854 and 321 patents enables archers to hunt confidentiality during dust and dawn by allowing better visibility of the sight tip, enabling accurate shot placement. [Amended Complaint, ¶ 10; Record No. 3] Afshari filed this action on January 20, 2012, claiming that Bear Archery, Inc., and SOP Services, Inc., had infringed his patents. Three days later, he filed an Amended Complaint containing essentially the same allegations.
In paragraphs 8 and 9, Afshari alleges that,
8. The 854 and 321 patents are directed to, an archery bow sight system which includes a sight pin, a sight pin Guard, a long fiber optic member, a pin attachment portion, and a wrapped portion when one end of fiber optic member is attached thru a hole which is at one end of the sight pin and a portion of the fiber optic is at least partially wrapped for gathering light and exposing it from the ends of the Fiber optic member.
9. On information and belief, defendant Bear archery and SOP services inc. has [sic] engaged in providing users with various Versions of paragraph8 above since 2007 until now....
[Record No. 3]
Following service, SOP Services, Inc., moved the Court to dismiss the claims asserted against it based on lack of personal jurisdiction pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. [Record No. 8] Bear Archery also filed a motion to dismiss, arguing that Afshari's claims were barred by the terms of a written settlement agreement executed on July 27, 2006, in which the plaintiff agreed not to sue Trophy Ridge, LLC or its successors with respect to the 854 and 321 patents. [Record Nos. 10 and 12] The subject settlement agreement provides, in part, that:
2.6 Ben [Afshari] warrants that he own all right, title, and interest in United States Patent No. 6, 725, 854 (the 854 patent) and any patent applications that claim priority to the 854 patent; and, on behalf of himself, his assignees and any successors-in-interest to the 854 patent and any patent applications that claim prior o the 854 patent, hereby unconditionally and irrevocably covenants not to sue or otherwise assert any claim of infringement derived from any patents that may issue claiming priority to the 854 patent (e.g., divisional patents, continuation patents, reissue patents, continuation-in-part patents), against Trophy Ridge, or its respective officers, directors, parents, subsidiaries, distributors and customers specifically for Trophy Ridge products, and any purchaser or assignee that acquires all or substantially all of Trophy Ridge's business or assets. The covenant not to sue shall extend to direct or indirect infringement involving past, present, and future Trophy Ridge products. United States Patent No. 6, 938, 349, which claims priority to the 854 Patent, is excluded from this covenant not to sue. If Trophy Ridge is purchased by a third party, product designs offered for sale by the acquiring party prior to the acquiring party's purchase of Trophy Ridge shall be excluded from this covenant not to sue.
[Record No. 3, Exhibit 3, p. 3]
Bear Archery asserts that: (i) in February 2007, it acquired substantially all of Trophy Ridge's business and assets; (ii) prior to the acquisition, Bear Archery did not offer for sale any of the archery sight models identified in the Amended Complaint; and (iii) none of the sight models identified in Afshari's Amended Complaint is based on product designs offered for sale by Bear Archery prior to its acquisition of Trophy Ridge. [Record No. 3, Exhibit 1, ¶¶ 3, 4] Based on the language of the settlement agreement, Bear Archery asserted that Afshari lacked standing to maintain this action.
Before Bear Archery's motion to dismiss was fully briefed, it filed an Answer to the Complaint and Counterclaim. [Record No. 13] Through its Counterclaim, Bear Archery asserted that Afshari had breached the above-referenced Settlement Agreement by filing the present action. On April 9, 2012, Afshari filed a response to the defendants' motions to dismiss, together with a separate motion for leave to file a second Amended Complaint. [Record Nos. 17, 18] By Opinion and Order dated July 24, 2012, the Court granted Defendant SOP Service's motion to dismiss, granted Afshari's motion for leave to file a second Amended Complaint, and denied Bear Archery's motion to dismiss the claims asserted against it. With respect to Bear Archery's motion, the Court concluded that it could not consider maters outside the pleadings without the matter being treated a one for summary judgment. [Record No. 22] And in light of the fact that no discovery had been allowed to that point, the Court declined to convert the motion to dismiss into a motion for summary judgment. [ Id., p. 3-4]
Bear Archery moved for summary judgment on March 18, 2014, making essentially the same arguments as outlined in its earlier motion to dismiss. [Record No. 51] However, the defendant did not seek judgment regarding all claims. Instead, it excluded claims relating to the Foxfire SP sight from its motion. According to Bear Archery, claims relating to all other archery sights identified in the plaintiff's second amended complaint were barred by the explicit provisions of the 2006 settlement agreement. [Record No. 53] The motion has now been fully briefed. Having considered the information and relevant evidence set out in the ...