United States District Court, N.D. West Virginia
R. ROBERT GOUGHNOUR, an individual, Plaintiff,
HAYWARD BAKER, INC., a corporation, Defendant.
MEMORANDUM OPINION AND ORDER GRANTING PLAINTIFF'S
MOTION FOR LEAVE TO FILE SURREPLY, DENYING PLAINTIFF'S
MOTION FOR SUMMARY JUDGMENT IN REGARD TO LIABILITY AND
GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT
FREDERICK P. STAMP, JR. UNITED STATES DISTRICT JUDGE
civil action arises out of an alleged breach of a licensing
agreement for the rights to practice United States Patent No.
5, 800, 090 (“the ‘090 patent”) and United
States Patent Application No. 10/352, 583 (“the
Application”). The plaintiff, Dr. R. Robert Goughnour
(“Goughnour”), held the ‘090 patent and the
Application as the assignor. The plaintiff entered into a
licensing agreement referred to as the
“assignment” with Nilex Construction, LLC
(“Nilex”) as the assignee. The defendant, Hayward
Baker, Inc. (“Hayward Baker”), purchased some of
Nilex's assets and obligations, including its rights
under the licensing agreement assignment. Goughnour alleges
that, beginning in April 2016, Hayward Baker has refused to
comply with the terms of the licensing agreement.
Plaintiff's complaint includes as Count One a petition
for declaratory judgment and as Count Two a petition for
specific performance of the contract. Accordingly, Goughnour
seeks a declaration that Hayward Baker is bound by the
licensing agreement and an order requiring specific
performance of the agreement.
originally filed this civil action in the Circuit Court of
Brooke County, West Virginia. Hayward Baker removed the case
to this Court, citing diversity jurisdiction (ECF No. 1).
Plaintiff filed a motion to remand (ECF No. 4). This Court
entered an order (ECF No. 8) denying plaintiff's motion
to remand. The parties filed a stipulation agreeing to waive
their right to a jury trial and requesting a bench trial (ECF
No. 17). This Court entered an order approving the joint
stipulation (ECF No. 18).
Goughnour then filed a motion for summary judgment in regard
to liability (ECF No. 21) and a memorandum brief in support
(ECF No. 22). Defendant Hayward Baker filed objections (ECF
No. 27) to “plaintiff's undisputed material
facts” and also filed a response (ECF No. 28) in
opposition to plaintiff's motion for summary judgment in
regard to liability. Plaintiff then filed a reply (ECF No.
32) to defendant's response.
Hayward Baker then filed a motion for summary judgment (ECF
No. 33) and a memorandum in support of the motion. Plaintiff
filed a response in opposition (ECF No. 34) and defendant
filed a reply (ECF No. 36). Plaintiff Goughnour then filed a
motion for leave to file a surreply (ECF No. 37) and a
surreply (ECF No. 38). Defendant Hayward Baker filed a
response in opposition (ECF No. 40) and a surrebuttal (ECF
No. 41) to plaintiff's motion for leave to file a
Court finds that the motions have been fully briefed and that
the pending motions for summary judgment are ripe for
Federal Rule of Civil Procedure 56, this Court must grant a
party's motion for summary judgment if “there is no
genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a). A fact is “material” if it might affect
the outcome of the case. Anderson v. Liberty Lobby,
477 U.S. 242, 248 (1986). A dispute of material fact is
“genuine” if the evidence “is such that a
reasonable jury could return a verdict for the non-moving
party.” Id. If the nonmoving party
“fails to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden of proof at
trial, ” summary judgment must be granted against the
plaintiff. Celotex Corp. v. Catrett, 477 U.S. 317,
322 (1986). In reviewing the supported underlying facts, all
inferences must be viewed in the light most favorable to the
party opposing the motion. See Matsushita Elec. Indus.
Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).
party seeking summary judgment bears the initial burden of
showing the absence of any genuine issues of material fact.
See Celotex, 477 U.S. at 322-23. “The burden
then shifts to the nonmoving party to come forward with facts
sufficient to create a triable issue of fact.”
Temkin v. Frederick County Comm'rs, 945 F.2d
716, 718 (4th Cir. 1991), cert. denied, 502 U.S.
1095 (1992). However, “a party opposing a properly
supported motion for summary judgment may not rest upon the
mere allegations or denials of his pleading, but . . . must
set forth specific facts showing that there is a genuine
issue for trial.” Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 256 (1986).
parties have now filed cross motions for summary judgment,
which have been fully briefed and are discussed in turn
below. For the following reasons, the plaintiff's motion
for summary judgment as to liability (ECF No. 21) is denied,
and the defendant's motion for summary judgment (ECF No.
33) is granted.
Goughnour filed a motion for summary judgment in regard to
liability (ECF No. 21) and a memorandum brief in support (ECF
No. 22). In support thereof, the plaintiff represents that
the complaint filed by the plaintiff contains two counts.
Count One of the plaintiff's complaint “contains a
petition for declaratory judgment wherein the Plaintiff
requests that the Court declare that the terms of the
contract between the Plaintiff and the Nilex Corporation are
binding upon the Plaintiff and the Defendant, Hayward Baker,
Inc., and that the Defendant, Hayward Baker, Inc., is legally
obligated under the above referenced contract to make
payments to the Plaintiff.” ECF No. 21 at 1.
Two of the plaintiff's complaint “contains a cause
of action which is a petition for specific performance of the
same contract described in Count One of the Complaint which
contract was assigned to the Defendant, Hayward Baker,
Inc.” ECF No. 21 at 1-2. Plaintiff posits a list of
“undisputed material facts” and asserts that
“there are no genuine issues as to any material facts
concerning the plaintiff's causes of action set forth in
Count One and Count Two of the Plaintiff's Complaint,
” and that he is “entitled to judgment as a
matter of law in regard to liability involving Counts One and
Two of the Complaint.” ECF No. 2 at 2-5. Defendant
Hayward Baker filed objections (ECF No. 27) to
“plaintiff's undisputed material facts”
contained within the motion for summary judgment as to
liability and also filed a response (ECF No. 28) in
opposition to plaintiff's motion. Defendant asserts,
“[w]ithin its Motion for Summary Judgment in Regard to
Liability, Plaintiff R. Robert Goughnour sets forth thirteen
(13) material facts which he believes are undisputed.”
Hayward Baker “disagrees with Goughnour's
assertions and believes several of undisputed material facts
put forth by Goughnour are disputed and/or contrary to the
evidence produced to date.” ECF No. 27 at 1. In its
response, defendant asserts Goughnour is not entitled to
summary judgment as patent holders cannot charge royalties
for the use of their invention after the patent term has
expired and that the relevant clause of the agreement is
ambiguous and the intent of the parties should therefore