United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLON UNITED STATES MAGISTRATE JUDGE.
before the court in this patent infringement action is the
motion to dismiss pursuant to Federal Rule of Civil Procedure
41(b), filed by defendants MirTech, Inc.
("MirTech") and Dr. Nazir Mir ("Dr. Mir")
(together, the "MirTech defendants"). (D.I. 178)
For the following reasons, I recommend that the court grant
the MirTech defendants' motion to dismiss pursuant to
Rule 41(b), without prejudice.
August 3, 2016, plaintiff AgroFresh, Inc.
("AgroFresh") filed a complaint commencing the
instant litigation. The complaint arises out of a failed
business relationship between AgroFresh and the MirTech
defendants, and includes claims of ownership of certain
intellectual property, breach of contract, tortious conduct,
and patent infringement. More specifically, Count I of the
complaint revolves around the agreements between AgroFresh
and the MirTech defendants, and whether the MirTech
defendants were obligated to disclose and automatically
assign to AgroFresh the rights to U.S. Patent No. 9, 394, 216
("the '216 patent"), which was developed and
filed by the MirTech defendants. Count IV of the complaint
includes allegations that the MirTech defendants fraudulently
induced AgroFresh to sign an extension to the parties'
agreements in October 2015.
October 2016, the parties filed a joint motion to bifurcate
Counts I and IV of the complaint on the grounds that
prioritizing the claim of ownership of the '216 patent
and the fraudulent inducement claim would simplify and
clarify the disputed issues in the case, likely facilitate
resolution, and result in economies for the court and the
parties. (D.I. 18) The court granted the motion, and held a
bench trial on Counts I and IV from March 20 to March 22,
2017. In its Findings of Fact and Conclusions of Law, entered
on June 30, 2017, the court entered judgment in favor of
AgroFresh and against the MirTech defendants on Counts I and
IV. Specifically, the court concluded that the '216
patent was an improvement related to the product which was
automatically assigned to AgroFresh, and Mir fraudulently
induced AgroFresh into executing an extension to various
agreements by not disclosing the '216 patent disclosure
or Mir's business relationship with Decco. (D.I. 97 at
the court's decision, AgroFresh filed its first amended
complaint ("FAC") against the same original parties
and added UPL Ltd. as a defendant. (D.I. 106) The FAC added
causes of action under the Defend Trade Secrets Act, the
Pennsylvania Trade Secrets Act, and related tort theories.
(Id.) On September 15, 2017, the MirTech defendants
and AgroFresh executed a private settlement agreement (the
"Settlement Agreement"). (D.I. 178, Ex. A) On
September 18, 2017, the MirTech defendants entered into a
final consent judgment with AgroFresh, pursuant to which the
MirTech defendants "consent[ed] to a judgment
establishing liability" for all counts alleged against
them and "agree[d] to remit payment... to compensate
AgroFresh," including $340, 000 in damages. (D.I. 115)
On September 29, 2017, a scheduling order was entered on the
remaining counts of the FAC. (D.I. 122) On September 22,
2017, the MirTech defendants provided AgroFresh a complete
list of inventions, discoveries, and improvements related to
1-MCP in accordance with the Settlement Agreement and consent
judgment. On September 29, 2017, Mir sat for a deposition
pursuant to the terms of the Settlement Agreement. On October
15, 2017, the MirTech defendants executed a series of
documents to assign the intellectual property to AgroFresh.
The Settlement Agreement required AgroFresh to dismiss the
MirTech defendants from the action without prejudice by
September 25, 2017.
to Federal Rule of Civil Procedure 41 (b), a court may
dismiss an action for "fail[ure] to prosecute or to
comply with [the Federal Rules of Civil Procedure] or a court
order." Fed.R.Civ.P. 41(b). This determination is within
the district court's discretion. Link v. Wabash R.R.
Co., 370 U.S. 626, 630-32 (1962); Livera v. First
Nat'l Bank of New Jersey, 879 F.2d 1186, 1194 (3d
Cir. 1989). In considering whether dismissal is appropriate,
courts within the Third Circuit use the following six-factor
(1) the extent of the party's personal responsibility;
(2) the prejudice to the adversary caused by the failure to
meet scheduling orders and respond to discovery; (3) a
history of dilatoriness; (4) whether the conduct of the party
or the attorney was willful or in bad faith; (5) the
effectiveness of sanctions other than dismissal, which
entails an analysis of alternative sanctions; and (6) the
meritoriousness of the claim or defense.
Poulis v. State Farm Fire & Cas. Co., 747 F.2d
863, 868 (3d Cir. 1984); see also Livera, 879 F.2d
at 1194. However, the court is not required to weigh the
Poulis factors under certain
circumstances. See Sisk v. Sussex County, C.A.
No. 11-121-RGA-CJB, 2013 WL 240606, at *3 (D. Del. Jan. 22,
2013) (citing Jackson v. U.S. Bankr. Ct., 350
Fed.Appx. 621, 624 (3d Cir. 2009) (per curiam); Spain v.
Gallegos, 26 F.3d 439, 455 (3d Cir. 1994)).
support of the motion to dismiss pursuant to Rule 41(b), the
MirTech defendants allege that they have complied with the
terms of the Settlement Agreement and court-ordered
deadlines. (D.I. 178 at 5) According to the MirTech
defendants, AgroFresh failed to comply with the Settlement
Agreement when it did not dismiss the MirTech defendants from
the action without prejudice on September 25, 2017.
(Id. at 3)
response,  AgroFresh contends that the MirTech
defendants failed to comply with multiple provisions of the
Settlement Agreement, and specifically cites their failure to
sign the required documentation or prosecute the patents at
issue in good faith, their failure to accurately disclose
Mir's financial status in connection with the settlement,
and their failure to produce any documents previously
withheld pursuant to the common interest privilege. (D.I. 197
at 2-3) Nevertheless, AgroFresh indicates that it is
"not opposed to dismissal without prejudice" on the