Opinion
Case No. 8:10-cv-2678-T-24 AEP.
May 23, 2011
ORDER
This cause comes before the Court on Defendant Groupon, Inc.'s motion for sanctions pursuant to Rule 11 of the Federal Rules of Civil Procedure. (Doc. No. 47). Plaintiff eWinWin, Inc. has filed a response in opposition to the motion (Doc. No. 53) to which Groupon has filed a reply (Doc. No. 60).
On December 1, 2010, eWinWin filed its complaint for patent infringement for direct infringement of: U.S. Patent Number 7,124,099 (Count I), U.S. Patent Number 7,181,419 (Count II), U.S. Patent Number 7,689,469 (Count III), and U.S. Patent Number 7,693,748 (Count IV). (Doc. No. 1). On January 18, 2011, Groupon filed its answer and a nine-count counterclaim for declaratory judgment of non-infringement and invalidity as to all of eWinWin's asserted patents and infringement of Groupon's Patent Number 6,269,343. (Doc. No. 21).
On February 25, 2011, Groupon electronically submitted to eWinWin a motion for Rule 11 sanctions. (Doc. No. 53 at 8). In the motion for sanctions, Groupon argues that every cause of action alleged by eWinWin is frivolous and unsupportable. In response, eWinWin submitted to Groupon a proposed amended complaint that withdrew Counts I and IV, narrowed the asserted claims in Count III, and added a new claim for a patent that was issued to eWinWin on March 1, 2011. Id. at 9. However, Groupon refused to stipulate to the filing of eWinWin's proposed amended complaint. Thereafter, on March 24, 2011, Groupon filed the instant motion for Rule 11 sanctions. (Doc. No. 47).
Rule 11(c)(2) of the Federal Rules of Civil Procedure requires that a Rule 11 motion for sanctions "must be served under Rule 5, but it must not be filed or be presented to the court if the challenged paper, claim, defense, contention, or denial is withdrawn or appropriately corrected within 21 days after service or within another time the court sets."
On April 1, 2011, eWinWin filed a motion for leave to amend its complaint, specifically seeking (1) to withdraw claims of infringement of two previously asserted patents — U.S. Patent Numbers 7,124,099 (Count I of the original complaint) and 7,693,748 (Count IV of the original complaint); (2) to narrow the infringement claims in another previously asserted claim — U.S. Patent Number 7,689,469 (Count III of the original complaint); and (3) to add infringement claims as to a newly issued patent — U.S. Patent Number 7,899,707. Groupon opposed the motion to amend the complaint. (Doc. No. 58). On May 11, 2011, the Court granted eWinWin's motion for leave to amend the complaint. (Doc. No. 64). Thereafter, on May 17, 2011, eWinWin filed its first amended complaint against Groupon. (Doc. No. 65).
U.S. Patent Number 7,899,707 was issued on March 1, 2011 so infringement of that patent could not have been asserted in the original complaint filed in December of 2010.
In the instant motion for Rule 11 sanctions, Groupon alleges that the four counts asserted in eWinWin's original complaint are frivolous and unsupportable. However, the amended complaint is substantially different from the original complaint in that eWinWin withdrew the infringement claims of two previously asserted patents, narrowed the infringement claims in another previously asserted patent, and added claims of infringement of a newly issued patent to the action. Because eWinWin's amended complaint is substantially different from the original complaint and because Groupon's motion for Rule 11 sanctions is based on the original complaint, the Court denies Groupon's Rule 11 motion for sanctions without prejudice.
Accordingly, Groupon's motion for Rule 11 sanctions (Doc. No. 47) is DENIED WITHOUT PREJUDICE.
DONE AND ORDERED at Tampa, Florida.