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E.I Du Pont De Nemours & Co. v. Macdermid Printing Solutions LLC

United States District Court, D. Delaware

March 31, 2017

E.I. DU PONT DE NEMOURS & CO., Plaintiff/Counterclaim Defendant,
MACDERMID PRINTING SOLUTIONS L.L.C., Defendant/Counterclaim Plaintiff.

          Peter J. Walsh, Jr., Esquire, Ryan C. Cicoski, Esquire, and Jesse L. Noa, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Plaintiff E.I. du Pont de Nemours & Co.

          William J. Marsden, Jr. Esquire of Fish & Richardson P.C., Wilmington, Delaware. Counsel for MacDermid Printing Solutions LLC. Of Counsel: John R. Horvack, Jr., Esquire, Fatima Lahnin, Esquire, and John L. Cordani, Jr., Esquire of Carmody Torrance Sandak & Hennessey LLP, New Haven, Connecticut.


          ROBINSON Senior District Judge.


         Plaintiff E.I. DuPont de Nemours & Company ("DuPont") and defendant MacDermid Printing Solutions, LLC ("MacDermid") are commercial competitors in the field of thermal flexographic printing plates and processors. In another lawsuit in another court, MacDermid sued its former manufacturer Cortron Corporation ("Cortron") for allegedly conspiring with DuPont in violation of state and federal antitrust laws. When the court in that case returned a verdict in MacDermid's favor and awarded damages, DuPont initiated the instant lawsuit seeking a declaratory judgment that, inter alia, MacDermid cannot enforce that judgment against DuPont. MacDermid has asserted a counterclaim alleging that DuPont's failure to satisfy the judgment breached a contract between Cortron and DuPont to which, MacDermid claims, it is a third-party beneficiary. Currently before the court are cross-motions for summary judgment. (D.I. 45; D.I. 50) The court has subject matter jurisdiction over this action pursuant to 28 U.S.C. § 1332. For the reasons discussed below, MacDermid's motion for summary judgment is denied, and DuPont's motion for summary judgment is granted in part and denied in part.


         MacDermid develops and sells as a commercial product thermal flexographic printing plates and processors. (D.I. 15 ¶ 1) MacDermid contracted with Cortron to manufacture MacDermid's "LAVA" thermal flexographic processors and develop a next generation processor. (Id.) LAVA competes against DuPont's FAST system. (D.I. 46 at 1) All three companies have brought multiple suits against each other in multiple jurisdictions. (See D.I. 15 ¶¶ 2-8) The court reduces this convoluted history to the following essential facts.

         On April 1, 2008, DuPont filed a lawsuit against Cortron in the United States District Court for the District of Minnesota (the "Minnesota lawsuit"), alleging that the equipment that Cortron manufactured for MacDermid infringed DuPont's U.S. Patent No. 6, 797, 454 ("the '454 patent"). (Id. at 2) MacDermid was not named as a party to the Minnesota lawsuit. In June 2008, DuPont and Cortron resolved the Minnesota lawsuit by entering into a confidential settlement agreement (the "Settlement Agreement"). The Settlement Agreement provided, among other things, that Cortron would: (1) transfer all rights and title in all thermal technology to DuPont; (2) cease manufacturing, selling, servicing, and technically supporting any thermal technology; (3) cease all research, development, design and manufacture of any process or equipment related to thermal technology without DuPont's written consent; (4) transfer to DuPont all technical information relating to all thermal technology; and (5) assign all intellectual property to DuPont. (D.I. 48-4 at ¶ 483-93, § 3.1-3.5)

         In exchange, DuPont agreed to indemnify and hold Cortron harmless from all costs and expenses related to certain claims they expected MacDermid to assert. (Id. at § 4.2) Specifically, the Settlement Agreement provides that:

DuPont... shall defend, indemnify and hold Cortron harmless from and against any and all damage, liability, claims or suit arising from or incident to compliance with the provisions of this Agreement, and the transfer and assignment of the Thermal Technology, the Intellectual Property and the Technical Information governed by this Agreement. Specifically, DuPont agrees to defend, indemnify and save Cortron ... harmless from all costs and expenses, including court fees, attorneys' fees, damages, losses and expenses, of and from all claims (a) asserted against Cortron by MacDermid Printing Solutions, LLC ("MacDermid") for Cortron's actions or omission involving DuPont on or after April 1, 2008; (b) arising out of Cortron's compliance with the terms of this Agreement; (c) arising between Cortron and MacDermid related to inventorship, joint ownership, breach of confidentiality due to disclosure to DuPont; or (d) arising out of the existing business relationship between MacDermid and Cortron with respect to the Gen 2 Patent under the Joint Development Agreement between Cortron and MacDermid ....


         The Settlement Agreement was executed on June 5, 2008. (Id.) On July 21, 2008, MacDermid moved to amend its counterclaims in a previously existing patent infringement lawsuit between DuPont and MacDermid pending before the United States District Court for the District of New Jersey (the "New Jersey lawsuit"). (D.I. 48-1 at ¶ 164-249) MacDermid's amendment asserted antitrust counterclaims based in part on the Settlement Agreement between DuPont and Cortron. (Id.) On September 29, 2008, MacDermid brought similar antitrust claims against Cortron in the United States District Court for the District of Connecticut ("Connecticut I"), the forum required by the exclusive forum selection clauses in MacDermid's contracts with Cortron. (D.I. 46 at 5; D.I. 48 at ¶ 9, A20) MacDermid did not name DuPont as a party to Connecticut I.[1] (Id.) On January 22, 2009, the New Jersey court granted MacDermid's motion to amend, and the antitrust counterclaims against DuPont, referred to as the "non-patent counterclaims, " were added to the New Jersey lawsuit. (D.I. 48 at ¶ 52) On that same date, the New Jersey court also granted DuPont's motion to bifurcate the non-patent claims and give precedence to DuPont's patent claims.[2] (D.I. 54 at 3)

         On July 8, 2014, the jury in Connecticut I returned a verdict against Cortron and in favor of MacDermid. (D.I. 15 ¶ 6) On February 17, 2015, the verdict was reduced to a final judgment that awarded $19, 757, 854 in compensatory damages, $27, 538, 880 in punitive damages, $2, 641, 587 in attorneys' fees, and $14, 732 in offer-of-compromise interest, for a total award of $64, 670, 821 (the "Judgment"). (D.I. 1-1 ¶¶ 26-27) A few weeks later, DuPont filed a complaint in the Superior Court of the State of Delaware (the "Delaware lawsuit") seeking a declaratory judgment that MacDermid cannot sue DuPont for satisfaction of the Judgment or for any other claims related to the Settlement Agreement and/or Connecticut I. (D.I. 1-1) The following day, March 4, 2015, MacDermid filed a new action against DuPont in the United States District Court for the District of Connecticut ("Connecticut III"), asserting that it is a third-party beneficiary of the Settlement Agreement and DuPont breached that agreement by not satisfying the Judgment. (D.I. 15 ¶8) MacDermid then removed the Delaware lawsuit to this court and asserted a counterclaim for breach of contract identical to the only claim it asserted in Connecticut III. (D.I. 1; D.I. 18)

         Connecticut I was appealed to the Second Circuit, which reversed the judgment as to the antitrust claims, affirmed the judgment in all other respects, and remanded for a recalculation of damages. (D.I. 46 at 6) The claims in the New Jersey lawsuit are still being actively litigated. (D.I. 54 at 3-4) Connecticut III has been dismissed in favor of this action. (See MacDermid Printing ...

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