District Judge Jesse M. Furman granted declaratory judgment plaintiff Skyline Steel, LLC’s motion for summary judgment of noninfringement, denied its motion for summary judgment on the issue of bad faith, denied in part its motion for spoliation sanctions, and granted defendant PilePro summary judgment on bad faith even though PilePro had not cross-moved for summary judgment. PilePro is the owner of U.S. Patent No. 8,556,543 (“the ’543 patent”), directed to a method for manufacturing sheet pile wall components. Skyline is the distributor of a sheet piling system called the “HZM System.” Skyline brought a declaratory judgment action against PilePro seeking declaration of invalidity of the ’543 patent and noninfringement with respect to three components of the HZM System: King Pile beams, intermediary AZ piles, and connectors.

The court noted that PilePro never asserted that intermediary AZ Piles or connectors infringed the ’543 patent, and had conceded that unlisted King Pile beams do not infringe the ’543 patent. Therefore, it granted as uncontested Skyline’s motion for summary judgment with respect to the intermediary AZ Piles, connectors, and unlisted King Pile beams. The court also granted Skyline’s motion with respect to the listed King Pile beams because it found PilePro’s interpretation of the ’543 patent “flatly contradicted by the text and images contained in the patent itself, the patent prosecution history, and the arguments that PilePro previously made before [the] court.”

On the issue of bad faith, the court denied Skyline’s motion for summary judgment and, although PilePro had not moved for it, granted PilePro summary judgment on that issue with respect to all claims except those arising from one particular accusation of infringement. The court concluded that PilePro’s infringement accusations were not objectively baseless since they were based on a reasonable proposed claim construction, even though the court ultimately adopted Skyline’s construction (and granted Skyline a declaration of noninfringement on that basis).

Finally, the court granted in part Skyline’s motion for spoliation sanctions relating to its Lanham Act claim, and awarded it monetary sanctions for PilePro’s failure to preserve electronic data about who had viewed its website, which stated that Skyline’s HZM System “infringes a U.S. Patent owned by PilePro, LLC.”

Case: Skyline Steel, LLC v. PilePro, LLC, No. 13-CV-8171 (JMF), 2015 BL 118291 (S.D.N.Y. Apr. 24, 2015)