NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1473
ROCKY MOUNTAIN TECHNOLOGY ENGINEERING COMPANY, LLC,
Plaintiff-Appellant,
v.
HUTCHENS INDUSTRIES, INC.,
Defendant-Appellee.
Steven R. Schumacher, Godfrey & Lapuyade, P.C., of Englewood, Colorado, for
plaintiff-appellant.
Randall E. Hendricks, Rouse Hendricks German May, PC, of Kansas City,
Missouri, for defendant-appellee. With him on the brief was Bryan T. White.
Appealed from: United States District Court for the District of Colorado
Judge Marcia S. Krieger
NOTE: This disposition is nonprecedential.
United States Court of Appeals for the Federal Circuit
2007-1473
ROCKY MOUNTAIN TECHNOLOGY ENGINEERING COMPANY, LLC,
Plaintiff-Appellant,
v.
HUTCHENS INDUSTRIES, INC.,
Defendant-Appellee.
Appeal from the United States District Court for the District of Colorado in case no. 05-
CV-01153, Judge Marcia S. Krieger.
___________________________
DECIDED: February 8, 2008
___________________________
Before GAJARSA, LINN, and DYK, Circuit Judges.
DYK, Circuit Judge.
Plaintiff-Appellant Rocky Mountain Technology Engineering Company (“RMTEC”)
appeals from a decision of the United States District Court for the District of Colorado
dismissing its patent infringement suit for failure to prosecute. We conclude that the
district court did not abuse its discretion in dismissing the action, and we affirm.
BACKGROUND
On June 21, 2005, RMTEC filed this case against defendant-appellee Hutchens
Industries, Inc. (“Hutchens”), claiming infringement of U.S. Patent No. 5,620,195 (“’195
patent”). The ‘195 patent concerns a locking system for the sliding undercarriage of a
semitrailer. On October 26, 2005, Hutchens filed its answer, as well as a counterclaim
alleging that the ‘195 patent is invalid and unenforceable. On April 19, 2006, as a result
of a scheduling conference, an order was issued setting various deadlines for filing
motions and reports and concluding discovery. The district court issued an order the
same day scheduling a final pretrial conference for May 22, 2007, with trial scheduled to
begin on August 20, 2007. RMTEC did not object to any of these deadlines.
RMTEC learned on April 28, 2006, that its patent counsel had decided to
withdraw from the case due to “a disagreement between RMTEC and [patent counsel]
as to the appropriate course of action that should be taken in this case.” However, a
motion to withdraw was not filed until June 30, 2006. The district court granted the
motion on August 23, 2006. RMTEC was still represented by its local counsel, Barry A.
Schwartz. In the parties’ joint status report and request for a Markman hearing, filed on
July 3, 2006, RMTEC indicated that it might need additional time to prepare for such a
hearing in order to locate substitute patent counsel, but did not request an extension of
any deadlines previously set by the court.
There is no claim that RMTEC failed to comply with the established deadlines
before September 2006. However, after patent counsel withdrew, RMTEC failed to file
any expert disclosures on September 1, 2006, and subsequently failed to serve a
rebuttal expert report by the October 1, 2006, deadline, deadlines set by the April 2006
scheduling order. Hutchens filed a motion for summary judgment on October 17, 2006.
On October 25, 2006, RMTEC for the first time filed a motion requesting
extensions of time on the dates set by the scheduling order. It requested that: (1) the
October 1, 2006, deadline to serve rebuttal expert reports, be extended to November
15, 2006; 1 (2) the November 1, 2006, deadline to respond to Hutchens’s discovery
requests, be extended to December 1, 2006; and (3) the November 9, 2006, deadline to
1
No extension of the missed September 1, 2006, deadline was requested.
2007-1473 2
respond to Hutchens’s motion for summary judgment, be extended to December 11,
2006. RMTEC stated that it had “found new counsel to prosecute this case, but those
attorneys are reluctant to enter appearances with certain deadlines looming so soon.”
Plaintiff’s Motion To Extend Certain Deadlines at 2, Rocky Mountain Tech. Eng’g Co. v.
Hutchens Indus., Inc., No. 05-cv-01153 (D. Colo. Oct. 25, 2006). On November 2,
2006, the district court granted all three requested extensions, subject to the condition
that “new patent counsel enters an appearance on the Plaintiff’s behalf no later than
November 13, 2006.” J.A. at 77. The court’s order stated, “No further extension of any
discovery deadline or of the deadline for responding to the summary judgment motion
will be granted.” Id.
Nonetheless, on November 9, 2006, RMTEC filed a second motion to extend the
same three deadlines, and to extend the deadline for new patent counsel to enter an
appearance from November 13, 2006, to December 13, 2006. The district court denied
RMTEC’s motion on the same day it was filed. New patent counsel did not enter an
appearance for RMTEC by November 13, and therefore the original deadlines were
reinstated. As a result, RMTEC failed to meet the October 1, November 1, and
November 9 deadlines. RMTEC also failed to comply with a November 17, 2006,
deadline to file a designation of claims, claim terms to be construed, and witnesses to
be called at a Markman hearing.
On December 6, 2006, RMTEC’s remaining counsel filed a motion to withdraw,
citing “[a]n irreconcilable conflict” with RMTEC. 2 RMTEC also filed a motion to stay the
2
This motion was never acted on, because the district court dismissed the
case before addressing it.
2007-1473 3
case for seventy-five days in order to retain new patent counsel. The court scheduled a
hearing for April 20, 2007, to address all pending motions.
At that hearing, the district court reviewed the history of the case, noting that “as
of this date there has been no substitution of counsel, no new counsel has entered an
appearance, and apparently the entire 75-day period that was requested has been
wasted. . . . The requested extensions of time, although not formally granted by the
Court, have long since passed, and the plaintiff has done nothing.” J.A. at 9. The judge
stated that under these circumstances she was inclined to dismiss RMTEC’s claim with
prejudice for failure to prosecute. After conferring together, the parties stated to the
court that they were close to reaching a settlement agreement, and requested three
weeks to work out the details. The district judge granted this request, stating that she
would “go ahead and enter a dismissal order today and stay its effectiveness for 30
days.” J.A. at 13. The parties ultimately were unable to reach a settlement agreement,
and the district court’s order dismissing the case became effective on May 21, 2007.
RMTEC timely appealed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
A dismissal for failure to prosecute under Federal Rule of Civil Procedure 41(b) 3
is a procedural issue not unique to patent law, which we review under regional circuit
law. Mitutoyo Corp. v. Cent. Purchasing, LLC, 499 F.3d 1284, 1290 (Fed. Cir. 2007).
The Tenth Circuit reviews a dismissal with prejudice under Rule 41(b) for abuse of
3
Although the district court referred, both in the hearing and in the dismissal
order, to Rule 41(a)(2), which governs voluntary dismissal by court order, the record is
clear and the parties agree that the dismissal was based on RMTEC’s failure to
prosecute this case, and was therefore a dismissal under Rule 41(b).
2007-1473 4
discretion. Rogers v. Andrus Transp. Servs., 502 F.3d 1147, 1152 (10th Cir. 2007).
“An abuse of discretion occurs when a district court makes ‘a clear error of judgment or
exceed(s) the bounds of permissible choice in the circumstances,’” by relying upon “an
erroneous conclusion of law or upon clearly erroneous findings of fact.” Ecclesiastes
9:10-11-12, Inc. v. LMC Holding Co., 497 F.3d 1135, 1143 (10th Cir. 2007).
A district court is permitted, as the court in this case did, to dismiss an action sua
sponte for failure to prosecute. Olsen v. Mapes, 333 F.3d 1199, 1204 n.3 (10th Cir.
2003). Before dismissing an action with prejudice under Rule 41(b), in the Tenth Circuit
a district court “ordinarily should consider” a nonexhaustive list of five factors: “(1) the
degree of actual prejudice to the other party; (2) the amount of interference with the
judicial process; (3) the litigant’s culpability; (4) whether the court warned the party in
advance that dismissal would be a likely sanction for noncompliance; and (5) the
efficacy of lesser sanctions.” Ecclesiastes, 497 F.3d at 1143. The court should
ordinarily evaluate these factors on the record, and should dismiss only “when ‘the
aggravating factors outweigh the judicial system’s strong predisposition to resolve cases
on their merits.’” Id. at 1144 (citation omitted); see also Ehrenhaus v. Reynolds, 965
F.2d 916, 921 (10th Cir. 1992).
RMTEC argues that the district court abused its discretion because it did not
explicitly consider each of the five factors listed above. We disagree. Although the
district court did not explicitly recite the factors, the Tenth Circuit does not require such
a recitation. It has reversed dismissals with prejudice when a district court’s failure to
consider the factors supporting such a dismissal “does not permit [the court] to make an
informed decision of whether the trial court adequately considered the criteria relevant
2007-1473 5
to deciding the appropriate sanction.” Mobley v. McCormick, 40 F.3d 337, 341 (10th
Cir. 1994) (reversing Rule 41 dismissal when district court’s three-paragraph order did
not consider any criteria at all); see also Procter & Gamble Co. v. Haugen, 427 F.3d
727, 738 (10th Cir. 2005) (reversing Rule 37 dismissal when record did not permit “any
meaningful review of the trial court’s decision”). However, in the closely related area of
sanctions for discovery noncompliance, the Tenth Circuit applies the same five-factor
test to determine whether dismissal with prejudice is appropriate, 4 and has made clear
that even when the factors are not recited, reversal is not required. In Archibeque v.
Atchison, Topeka, & Sante Fe Railway Co., 70 F.3d 1172 (10th Cir. 1995), the district
court dismissed the case with prejudice for discovery violations, noting in its order that
the failures were not mere oversight; that the defendant was irreparably prejudiced; and
that the plaintiff’s conduct seriously interfered with the judicial process. Id. at 1174. The
Tenth Circuit affirmed, noting that although “the court did not evaluate the [five] factors
on the record,” it “made clear the reasons for its dismissal of the action in its Order, and
its decision [was] fully supported by the record.” Id. at 1175. In this case, the district
court did consider most if not all of the five relevant five factors at the April 20, 2007,
hearing. With respect to each of the five factors, the record supports the district court’s
decision to dismiss.
With regard to the first factor, the district court extensively discussed the delay
caused by RMTEC’s failure to retain new patent counsel and to meet the deadlines of
October 1, November 1, November 9, and November 17. While the district court did not
4
See Mobley, 40 F.3d at 340 (finding “no principled distinction” between
dismissals with prejudice based on Rule 37 and Rule 41).
2007-1473 6
explicitly discuss prejudice, the Tenth Circuit has recognized that such delays are
inherently prejudicial to a defendant, who “has a legitimate interest in bringing the
matter to closure within a reasonable time.” Rogers, 502 F.3d at 1152; see also Jones
v. Thompson, 996 F.2d 261, 264 (10th Cir. 1993) (finding that “the Plaintiffs have
prejudiced the Defendants by causing delay and mounting attorney’s fees”).
The second factor, interference with the judicial process, is satisfied when a
plaintiff “ignore[s] court orders and . . . hinder[s] the court’s management of its docket
and its efforts to avoid unnecessary burdens on the court and the opposing party.”
Jones, 996 F.2d at 265. Here, RMTEC allowed several deadlines to pass without
requesting extensions of time. Even when extensions were granted, these new
deadlines were not met. The district court noted that, despite the court’s statement in its
November 2 order that no further extension of deadlines would be granted, RMTEC one
week later filed a second motion seeking further extensions; that “[i]t has been almost a
year since the plaintiff recognized [it] needed new patent counsel, and [it has] not gotten
new patent counsel,” J.A. at 9; and that the case was not ready to proceed to final
pretrial conference or trial as scheduled. Consistent with Jones, these findings support
the conclusion that RMTEC’s actions in this case interfered with the judicial process.
The third factor, the litigant’s culpability, was addressed by the district court’s
findings. The district court clearly found that RMTEC was responsible for its failure to
prosecute the case, noting that the party had allowed nearly a year to pass, from the
time that RMTEC learned in April 2006 that patent counsel planned to withdraw to the
date of the April 2007 hearing, without finding substitute patent counsel, and that it had
“wasted” the 75-day period it requested in order to retain new counsel and assist that
2007-1473 7
counsel in “getting up to speed” in the case. J.A. at 8-9. RMTEC argues that the district
court itself is to blame for the delay, because the court did not provide sufficient time for
any new counsel to prepare and prosecute the case. But here there were missed
deadlines long before RMTEC requested an extension to secure new counsel.
Even in a case where an extension request was properly filed, the Tenth Circuit
rejected a similar argument. In Jones, the plaintiffs argued that they were not at fault for
failing to retain replacement counsel, because the district court had denied a motion to
extend discovery deadlines by sixty days. 996 F.2d at 265. The Tenth Circuit found
that this did not mitigate their culpability because they “ha[d] not shown that any law firm
would represent them had the sixty-day extension been granted,” and had only offered
an unsigned agreement specifying that a particular lawyer would represent them if
certain other conditions were met. Id. Here, RMTEC offered only a general statement
in its January 23, 2007, motion that “a local law firm has expressed an interest in
stepping in on behalf of RMTEC in the event this Court agrees to extend the pending
deadlines.” J.A. at 104-05. Furthermore, although this prospective counsel attended
the April 20, 2007, hearing and was invited by the court to comment, he offered no
indication that he would be willing, even conditionally, to represent RMTEC in this
action. In light of these facts, we cannot say that the district court’s finding of culpability
was clearly erroneous.
As to the fourth factor, we note that notice is not required in all cases. See Link
v. Wabash R.R. Co., 370 U.S. 626, 632 (1962) (“Nor does the absence of notice as to
the possibility of dismissal . . . necessarily render such a dismissal void.”); Ecclesiastes,
497 F.3d at 1149 (stating that “notice is not a prerequisite for dismissal”). In any event,
2007-1473 8
even if the warning of potential dismissal in the April 19, 2006, scheduling order is read
as not encompassing the previously scheduled deadlines, the district court here did
provide notice. After notifying the parties that it was inclined to dismiss under Rule 41,
the court provided RMTEC an opportunity to present argument with regard to such
dismissal. Also, the court stayed the dismissal order for thirty days to provide RMTEC
an opportunity to request “further relief or modification of [the] order.” J.A. at 17. No
such request was made.
Finally, the fifth factor directs courts to consider whether lesser sanctions, such
as dismissal without prejudice, would be effective. Here the district court did not simply
grant dismissal because of the missed deadlines. First the court conditionally extended
three deadlines, one of which RMTEC had already missed, to permit RMTEC time to
secure new counsel. See Meade v. Grubbs, 841 F.2d 1512, 1520-21 (10th Cir. 1988)
(court should have considered pending motion to extend before dismissing when no
previous extensions had been granted). Additionally, the court imposed the lesser
sanction of staying the dismissal order for thirty days to allow the parties to reach a
settlement agreement or request “further relief or modification of [the] order.” J.A. at 17.
The district court was aware of the possibility of dismissing the action without prejudice,
and concluded that such a sanction would not be appropriate. See Nasious v. Two
Unknown B.I.C.E. Agents, 492 F.3d 1158, 1163 (10th Cir. 2007) (dismissal without
prejudice or partial dismissal are possible alternative sanctions).
Because the district court explicitly considered most of the relevant factors and
the record as to each of the five factors supports dismissal, we conclude that the court
did not abuse its discretion in dismissing the case with prejudice.
2007-1473 9
CONCLUSION
For the foregoing reasons, the district court’s decision is affirmed.
COSTS
No costs.
2007-1473 10