The opinion of the court was delivered by: Judge John E. Jones III
This patent dispute is before the Court on two motions: the Motion to Place the Second Amended Answer and Counterclaims on File (Doc. 91) of the defendant RB Rubber Products, Inc. ("RB Rubber") and the Motion to Dismiss Pursuant to Fed. R. Civ. P. 41(a)(2) (Doc. 85) of the plaintiff Dodge-Regupol, Inc. ("DRI"). For the reasons set forth below, RB Rubber's motion will be granted, and the second amended answer and counterclaims will be docketed. However, DRI's motion will also be granted, and this case will be dismissed.*fn1
DRI filed the complaint in this action on January 31, 2006, alleging RB Rubber "made, used, offered to sell, sold and may now or in the future make, use and/or sell" flooring products infringing on its U.S. Patent 6,920,723 (the "'723 patent"). (Compl, Doc. 1, ¶¶ 10-11.) On March 3, 2006, RB Rubber filed an answer and asserted counterclaims for a declaration of the invalidity of the '723 patent and a declaration of non-infringement. (Doc. 4.) After briefing from the parties, the Court conducted a Markman hearing on December 22, 2006. After receiving post-hearing submissions, the Court issued an order on March 9, 2007 construing the terms of the '723 patent. (Doc. 48.)
By the same order, the Court granted RB Rubber leave to file an amended answer and counterclaims, which were docketed on that date (Doc. 53). In addition to its two prior-asserted counterclaims, RB Rubber asserted a new counterclaim for tortious interference with business relationships based on DRI's contacting RB Rubber customers and advising them to cease purchasing RB Rubber products or risk legal action. (Id. at 4.)
The parties thereafter entered into several stipulations to extend discovery and expert report deadlines and to continue the trial term of this action (see Docs. 49-50, 54-55, 57-58, 61-63, 68-69, 74-75, 77-78, 80), and became embroiled in a dispute over discovery (see Docs. 70, 72).
On January 2, 2008, RB Rubber filed a motion for leave to file a second amended answer and counterclaims. (Doc. 76.) DRI concurred in the motion.
(Doc. 79.) RB Rubber's proposed second amended answer and counterclaims, a copy of which was attached to its motion (Doc. 76-5), withdrew its counterclaim for tortious interference with business relationships and asserted two new counterclaims for a declaration of invalidity and unenforceability of the '723 patent based on inequitable conduct and misrepresentation to the Patent and Trademark Office ("PTO"). By order of January 8, 2008, the Court granted RB Rubber leave to file its second amended answer and counterclaims and ordered it do so within twenty days. (Doc. 80.) RB Rubber, however, never separately filed its second amended answer and counterclaims on the docket. Nonetheless, RB Rubber continued to take discovery from both third-parties and DRI regarding the claims asserted in its second amended answer and counterclaims, and the parties entered into another dispute over discovery.
Meanwhile, DRI filed a reissue application with the PTO, asserting the same claims as those already issued in the '723 patent and 37 additional claims.
On May 30, 2008, DRI moved to withdraw its infringement claims against RB Rubber pursuant to Fed. R. Civ. P. 41(a)(2). (Doc. 85.) DRI also "covenant[ed] not to sue RB [Rubber] in the future for infringement of any claim of the '723 patent with respect to any of RB [Rubber]'s currently existing products or activities." (Id. at 1.) On the basis of this covenant not to sue, DRI moved to dismiss RB Rubber's counterclaims for lack of subject matter jurisdiction.
A. RB Rubber's Motion to Place the Second Amended Answer and Counterclaims on File
RB Rubber's failure to actually docket its second amended answer and counterclaims brings us to the first motion before the Court: RB Rubber's motion to place this submission on file. Like RB Rubber, the Court finds DRI's opposition to this motion perplexing. DRI concurred in RB Rubber's motion for leave to file the second amended answer and counterclaims. A copy of the amended pleading was attached to RB Rubber's motion, and the parties have clearly proceeded to litigate this case as if that document were the operative pleading. The Court has already granted RB Rubber leave to file the second amended answer and counterclaims. RB Rubber represents that simple mistake is the reason the amended answer was never docketed separately from its motion, and DRI has given no reason to disbelieve this assertion. Nor has DRI demonstrated that it would suffer any prejudice by allowing the docketing of the ...