United States Court of Appeals
for the Federal Circuit
__________________________
GREEN EDGE ENTERPRISES, LLC,
Plaintiff/Counterclaim Defendant-Appellant,
v.
RUBBER MULCH ETC., LLC AND RUBBER
RESOURCES, LTD., LLP,
Defendants/Counterclaimants-Cross Appellants,
and
GROUNDSCAPE TECHNOLOGIES, LLC,
Defendant/Counterclaimant,
v.
INTERNATIONAL MULCH COMPANY AND
MICHAEL MILLER,
Counterclaim Defendants-Appellees,
and
JUDY SMITH AND LEE GREENBERG,
Counterclaim Defendants.
__________________________
2009-1455, -1479
__________________________
Appeals from the United States District Court for the
Eastern District of Missouri in Case No. 02-CV-566,
Magistrate Judge Terry I. Adelman.
GREEN EDGE v. RUBBER MULCH 2
____________________________
Decided: September 7, 2010
____________________________
JOE D. JACOBSON, Green Jacobson, P.C., of Clayton,
Missouri, argued for plaintiff/counterclaim defendant-
appellant. With him on the brief was ALLEN P. PRESS.
RONALD D. FOSTER, Ronald Foster, P.C., of South
Bend, Indiana, argued for defendants/counterclaimants-
cross appellants.
JENNIFER E. HOEKEL, Senniger Powers LLP, of St.
Louis, Missouri, argued for counterclaim defendants-
appellees. With her on the brief was B. SCOTT EIDSON.
__________________________
Before RADER, Chief Judge, and LOURIE and BRYSON,
Circuit Judges.
LOURIE, Circuit Judge.
Green Edge Enterprises, LLC (“Green Edge”) appeals
from the decision of the United States District Court for
the Eastern District of Missouri granting summary judg-
ment of invalidity of U.S. Patent 5,910,514 (the “’514
patent”) for violation of the best mode requirement.
Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, No.
4:02CV566, 2008 U.S. Dist. Lexis 23378 (E.D. Mo. Mar.
25, 2008) (“Best Mode Op.”). Rubber Mulch and Rubber
Resources cross-appeal from the court’s dismissal of their
claim of trademark invalidity for lack of a case or contro-
versy. Green Edge Enters., LLC v. Rubber Mulch Etc.,
LLC, 509 F. Supp. 2d 814 (E.D. Mo. 2007) (“Trademark
Dismissal”). Rubber Resources cross-appeals from the
court’s dismissal of its Lanham Act claim for failure to
3 GREEN EDGE v. RUBBER MULCH
prove damages. Green Edge Enters., LLC v. Rubber
Mulch Etc., LLC, No. 4:02CV566, 2009 U.S. Dist. Lexis
53411 (E.D. Mo. June 24, 2009) (“Lanham Act Dis-
missal”). We reverse in whole or in part on all three
issues and remand.
BACKGROUND
A. ’514 Patent Claims
Green Edge owns the ’514 patent and sued Rubber
Mulch and Rubber Resources, among others, for in-
fringement. The ’514 patent claims a synthetic mulch
that is colored with a “water based acrylic colorant” to
imitate natural mulch. For example, claim 1 reads as
follows:
1. A synthetic mulch material sized, shaped, and
colored to imitate a natural mulch, wherein said
synthetic mulch is comprised of:
a) a plurality of rubber particles, with the rubber
selected from the group consisting of natural
polymers and synthetic high polymers, with said
rubber particles having an outer surface designed
and dimensioned to look like natural mulch se-
lected from the group consisting of pea gravel,
wood chips, and tree bark, and a length ranging
between about 1/16 inch and about 8 inches and a
width ranging between about 1/16 inches and
about 2 inches; and,
b) an amount of water based acrylic colorant
added in an amount equal to between about 3%
and about 10% by weight of said rubber particles,
with said colorant coating said rubber particles
thereby forming said synthetic mulch.
GREEN EDGE v. RUBBER MULCH 4
’514 patent col.5 l.62–col.6 l.15 (emphases added). The
specification states that the colorant “can be selected from
a variety of different coloring systems, as long as the
colorant is available in at least earth tone colors, readily
adheres to rubber, and does not wash off the rubber when
contacted by water.” Id. at col.4 l.64–col.5 l.3. However,
according to the specification, “[t]he most preferred color-
ants are water based acrylic systems such as the colorant
systems sold under the name ‘VISICHROME’, by Futura
Coatings, Inc. of Hazlewood, Mo.” Id. at col.5 ll.4–7.
Claim 3 of the ’514 patent recites “[t]he synthetic mulch of
claim 1 wherein said colorant is a water based acrylic
called VISICHROME.” Id. at col.6 ll.19–20.
At the district court, the parties agreed that there did
not exist a colorant system sold by Futura Coatings, Inc.
(“Futura”) under the name “Visichrome.” Instead, Green
Edge had used a product that Futura sold under the
product code “24009.” Green Edge asserted, however,
that it had believed the colorant system to be called
“Visichrome” based on a letter that it had received from
Jeffrey Jarboe, Futura’s vice president, in July 1997. Best
Mode Op., 2008 U.S. Dist. Lexis 23378, at *12. In that
letter, Jarboe stated that “[t]he Futura ‘Visichrome’
colorant system is designed to be a user friendly system.
The infinite colors available are packaged as a single
component water based acrylic system.” J.A. 250. The
letter then discussed how the “‘Visichrome’ colorants”
would be used to coat the rubber particles used by Green
Edge. Id. However, before the district court, Jarboe could
not remember why he used the term “Visichrome” in
reference to the colorant system. Best Mode Op., 2008
U.S. Dist. Lexis 23378, at *12.
In March 2008, the district court granted Rubber
Mulch and Rubber Resources summary judgment of
invalidity of the ’514 patent for failure to disclose the best
5 GREEN EDGE v. RUBBER MULCH
mode of the invention, pursuant to 35 U.S.C. § 112, para-
graph 1. Best Mode Op., 2008 U.S. Dist. Lexis 23378.
The court found that “Visichrome,” the only water-based
acrylic colorant disclosed in the specification, did not
exist, despite having been referenced in Jarboe’s letter.
Id. at *11–14. The court further held that Green Edge
had concealed the best mode by disclosing “a misleading,
non-existent name instead of the number,” when no
similar product was available on the market. Id. at *14.
The court therefore held the ’514 patent invalid based on
Green Edge’s failure to disclose the best mode of coloring
the rubber particles.
In its opinion, the district court declined to address
Rubber Mulch and Rubber Resources’ argument for
anticipation based on U.S. Patent 5,543,172 (“Jakubisin”).
Id. at *8–9. In fact, the court had previously denied
summary judgment of anticipation, obviousness, indefi-
niteness, and nonenablement of the ’514 patent in an
opinion dated January 10, 2007. Green Edge Enters., LLC
v. Rubber Mulch Etc., LLC, No. 4:02CV566, 2007 U.S.
Dist. Lexis 1939 (E.D. Mo. Jan. 10, 2007) (“Denial of SJ of
Anticipation”). In that opinion, the court noted that
anticipation is a question of fact for the jury to determine,
and that Rubber Mulch and Rubber Resources would have
to prove by clear and convincing evidence that the “un-
consolidated fall zone material” of Jakubisin would “imi-
tate[ ] natural mulch,” as required by the claims of the
’514 patent. Id. at *13. The court also stated that “a jury
could find differences between the functions and the
manufacturing of the products.” Id. at *13–14. The court
additionally denied summary judgment that the claims of
the ’514 patent were anticipated by others’ products, as
the parties had produced conflicting evidence such that a
jury could conclude that the products did not anticipate
the water-based acrylic colorant system or did not imitate
GREEN EDGE v. RUBBER MULCH 6
natural mulch. Id. at *14–15. The court denied summary
judgment of obviousness because Rubber Mulch and
Rubber Resources’ claim chart was uncorroborated and
there was a lack of evidence that the prior art resembled
natural mulch or was colorfast. Id. at *16–17.
In its January 2007 decision, the court also denied
summary judgment of indefiniteness, based on the exis-
tence of factual questions. Id. at *17. Finally, the court
denied summary judgment with respect to enablement,
reasoning that Rubber Mulch and Rubber Resources had
“failed to submit clear and convincing evidence that a
person cannot obtain a water based acrylic colorant from
Futura in lieu of the years of experimentation that [they]
assert would be required.” Id. at *20.
In July 2008, after the district court had disposed of
all claims relating to the validity of the ’514 patent,
counterclaim defendants International Mulch Company
and Michael Miller (collectively, “International Mulch”)
terminated a license with Green Edge for the ’514 patent,
and Green Edge then demanded that International Mulch
cease manufacture of its product. Green Edge Enters.,
LLC v. Rubber Mulch Etc., LLC, No. 4:02CV566, slip op.
at 1 (E.D. Mo. Nov. 26, 2008) (“Realignment Op.”). In
August 2008, International Mulch moved to realign itself
with Rubber Mulch and Rubber Resources in asserting
that the ’514 patent was invalid. Id. at 1–2. The court
granted the motion, reasoning that International Mulch
and Green Edge now had opposing interests in the valid-
ity of the ’514 patent. Id. at 3.
B. Trademark Claims
Green Edge also owns the trademark “RUBBERIFIC
MULCH” and alleged in its complaint that Rubber Mulch
had infringed the mark, based on Rubber Mulch’s use of
the words “Rubber Mulch.” International Mulch, the
7 GREEN EDGE v. RUBBER MULCH
assignee of the trademark, had previously sent Rubber
Mulch a cease and desist letter accusing it of trademark
infringement, stating that “RUBBER MULCH” was
confusingly similar to “RUBBERIFIC MULCH” and that
such use was likely to confuse the public. Trademark
Dismissal, 509 F. Supp. 2d at 819. Rubber Resources also
printed the words “Rubber Mulch” on its products. In the
present case, Rubber Mulch and Rubber Resources to-
gether counterclaimed for a declaratory judgment of
noninfringement and invalidity of the “RUBBERIFIC
MULCH” mark and included International Mulch, the
assignee, in their counterclaims.
In March 2007, the district court granted Interna-
tional Mulch summary judgment, finding no case or
controversy regarding Rubber Mulch and Rubber Re-
sources’ counterclaims of noninfringement and invalidity
of the trademark. Id. at 820. The court found that Inter-
national Mulch had not told Rubber Resources to cease
using any mark and held that Rubber Resources therefore
failed to establish an actual controversy. Id. at 818. The
court then found that Rubber Mulch had had a reasonable
apprehension of litigation with International Mulch but
had not demonstrated a definite intent to continue to use
“Rubber Mulch” as a trademark, instead planning to use
it as descriptive of its product. Id. at 819–20. As an
alternative holding, the court noted that neither Rubber
Mulch nor Rubber Resources had presented evidence to
show invalidity of the mark. Id. at 820.
Later, in June 2008, the district court ordered each
party to submit a status report on its remaining claims.
Green Edge Enters., LLC v. Rubber Mulch Etc., LLC, No.
4:02CV566, 2008 U.S. Dist. Lexis 55402, *2 (E.D. Mo.
July 22, 2008) (“Rubber Mulch Dismissal”). In July 2008,
when Rubber Mulch had not responded to the order, the
court dismissed without prejudice all of Rubber Mulch’s
GREEN EDGE v. RUBBER MULCH 8
counterclaims, specifically including the already-
dismissed counterclaims of trademark noninfringement
and invalidity. Id. at *3.
C. Lanham Act Claims
Among its counterclaims, Rubber Resources 1 also as-
serted a Lanham Act claim for unfair trade practices
against, among others, Green Edge and International
Mulch. J.A. 396 (amended counterclaim of June 22,
2005). International Mulch was at the time the exclusive
licensee of the ’514 patent. Rubber Resources alleged that
Green Edge and International Mulch had engaged in
unfair trade practices, including asserting the ’514 patent
in bad faith. J.A. 397. Rubber Resources stated that its
counterclaim was for “Unfair Competition in violation of
15 U.S.C. 1125.” J.A. 396. Under 15 U.S.C. § 1125(a), a
provision of the Lanham Act, a person who makes false
representations in connection with goods, with a likeli-
hood of causing confusion, “shall be liable in a civil action
by any person who believes that he or she is or is likely to
be damaged by such act.”
In its prayer for relief, Rubber Resources requested
that a “constructive trust be imposed upon [the] Green
Edge Parties’ profits in favor of Rubber Resources,” J.A.
398, having defined the “Green Edge Parties” as including
Green Edge and International Mulch Company, 2 J.A.
1 Rubber Mulch joined Rubber Resources in assert-
ing the Lanham Act violation in their amended counter-
claim. We do not address Rubber Mulch’s participation in
the Lanham Act counterclaim, however, because Rubber
Mulch does not join Rubber Resources’ appeal from the
district court’s Lanham Act decision.
2 Although Miller was not included in the amended
counterclaim, he was apparently added to the suit some-
time before International Mulch answered the counter-
claim on September 6, 2005, as he was included in
9 GREEN EDGE v. RUBBER MULCH
396–97. Rubber Resources also requested “any damages
[it had] sustained,” “exemplary damages,” and “such other
relief as the Court deem[ed] just and proper.” J.A. 398.
In July 2007, the district court addressed a motion for
summary judgment by Green Edge that Rubber Resources
had failed to disclose its damages calculation under Fed.
R. Civ. P. 26(a). Green Edge Enters., LLC v. Rubber
Mulch Etc., LLC, No. 4:02CV566 (E.D. Mo. July 2, 2007)
(“2007 Damages Op.”). Rule 26(a) states that “a party
must, without awaiting a discovery request, provide to the
other parties . . . a computation of each category of dam-
ages claimed.” Rule 37(c)(1) further states that a party’s
failure to provide the information required by Rule 26(a)
means the party may not use that information at trial
“unless the failure is substantially justified or is harm-
less.” In its order, the court stated that, “[g]iven the fact
that the case has been pending for 5 years and that the
Court has issued several Case Management Orders and
entertained numerous discovery motions, . . . Rubber
Resources ha[s] demonstrated substantial justification for
not previously disclosing damages.” 2007 Damages Op.,
slip op. at 8 (citing Rule 37(c)(1)). The court further relied
on Rubber Resources’ claim that it could “present evi-
dence of sales made to people who relied on the Green
Edge Parties’ representation of patent infringement by
other manufacturers and their being the sole source of the
non-infringing product.” Id. In a footnote, the court noted
that “[i]f, however, Green Edge believes that Rubber
Mulch cannot establish damages at trial, Green Edge may
present such argument in a Motion in Limine for the
Court’s review.” Id., slip op. at 8 n.4.
International Mulch’s answer. See Countercl. Defs.’
Answer to Countercl.-Pls.’ First Am. Countercl., Sept. 6,
2005.
GREEN EDGE v. RUBBER MULCH 10
In May 2009, just before trial, Green Edge and Inter-
national Mulch presented a motion in limine to preclude
Rubber Resources from introducing any evidence at trial
relating to damages for the alleged Lanham Act unfair
competition violation. Green Edge Enters., LLC v. Rubber
Mulch Etc., LLC, No. 4:02CV566, 2009 U.S. Dist. Lexis
41302, *2 & n.1 (E.D. Mo. May 14, 2009) (“2009 Damages
Op.”). The district court granted the motion, reasoning
that Rubber Resources had “failed to disclose any infor-
mation regarding its theory of damages until it filed its
trial brief and proposed jury instructions, less than three
weeks before trial. Additionally, Rubber Resources con-
tinue[d] to decline to provide even an estimated calcula-
tion.” Id. at *5–6. According to the court, Rubber
Resources had agreed throughout discovery that a profit
and loss summary from Green Edge would suffice for a
damages calculation, but just before trial, it represented
for the first time that such a summary was insufficient,
and it could not disclose calculated damages under Rule
26(a). Id. at *6–9. The court also stated that Rubber
Resources had belatedly disclosed that it sought “lost
profits, disgorgement of International Mulch’s and Green
Edge’s profits, loss of good will, and treble damages.” Id.
at *19. Finally, the court found that Rubber Resources’
actions were not substantially justified, and that permit-
ting new evidence would not be harmless in light of the
many years the case had been pending and the fact that it
was the “eve of trial.” Id. at *20.
In June 2009, the district court dismissed Rubber Re-
sources’ Lanham Act unfair competition counterclaim
because, after its second damages opinion, 2009 Damages
Op., 2009 U.S. Dist. Lexis 41302, Rubber Resources was
unable to show any damages. Lanham Act Dismissal,
2009 U.S. Dist. Lexis 53411 at *7. Thus, Rubber Re-
sources was unable to demonstrate a prima facie case of
11 GREEN EDGE v. RUBBER MULCH
unfair competition, and the court held that summary
judgment was appropriate as a matter of law. Id.
D. The Appeal
Green Edge timely appealed from the district court’s
grant of summary judgment of invalidity of the ’514
patent. Rubber Mulch and Rubber Resources cross-
appealed from the court’s dismissal of their trademark
invalidity claim. Rubber Resources also cross-appealed
from the court’s dismissal of its Lanham Act claim. We
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
We review de novo the district court’s grant of sum-
mary judgment, drawing all reasonable inferences in
favor of the nonmovant. Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 255 (1986). Summary judgment is appro-
priate “if the pleadings, the discovery and disclosure
materials on file, and any affidavits show that there is no
genuine issue as to any material fact and that the movant
is entitled to judgment as a matter of law.” Fed. R. Civ. P.
56(c).
A. The District Court Erred by Invalidating the ’514
Patent
Green Edge argues that the district court erred in
granting summary judgment of invalidity for failure to
describe the best mode. Green Edge asserts that it did
not know the composition of the proprietary colorant; all
it knew was the name “Visichrome,” which it believed to
be the product name, plus the product code number.
According to Green Edge, there was no evidence that the
patentees subjectively intended to conceal anything.
Further, according to Green Edge, when it approached
another manufacturer about supplying colorants to make
the claimed invention, that manufacturer found no undue
GREEN EDGE v. RUBBER MULCH 12
experimentation necessary to supply colorants. Green
Edge also argues that only claim 3 could possibly be
invalid for a best mode violation because it is the only
claim that recites “Visichrome.”
Rubber Mulch and Rubber Resources 3 respond that
the inventors believed that only the colorant designated
by the code 24009 would perform the required functions,
3 International Mulch also spends a full fifteen
pages of its brief asserting the invalidity of the ’514
patent. However, International Mulch waived any sepa-
rate argument in favor of summary judgment of invalid-
ity. International Mulch did not actually argue the
invalidity of the ’514 patent to the district court. In fact,
International Mulch terminated its license agreement and
moved for realignment, and the court issued its decision
Realignment Op., No. 4:02CV566, all after the court had
fully decided all of the summary judgment issues relating
to the validity of the ’514 patent. Moreover, International
Mulch had control over the timing of its termination of
the license agreement and could have terminated it in
time to present invalidity arguments to the district court.
Cf. Balgowan v. New Jersey, 115 F.3d 214, 217 (3d Cir.
1997) (holding that a party could be added during appeal
when it could not control the timing of when it knew of its
claim). International Mulch could also have argued
invalidity at any time, without terminating the license
agreement. See MedImmune, Inc. v. Genentech, Inc., 549
U.S. 118, 137 (2007). Thus, we do not address Interna-
tional Mulch’s separate arguments on appeal, as they
have been waived.
However, we do not conclude that the district court
abused its discretion in granting International Mulch’s
motion to realign itself with Rubber Mulch and Rubber
Resources with regard to the validity of the ’514 patent,
after International Mulch terminated its license agree-
ment with Green Edge. See Realignment Op., slip op. at
2. Thus, International Mulch may assert non-waived
arguments for the invalidity of the ’514 patent on remand,
as it is permissibly aligned with Rubber Mulch and Rub-
ber Resources.
13 GREEN EDGE v. RUBBER MULCH
but the inventors did not disclose it. According to Rubber
Mulch and Rubber Resources, the best mode can be
violated without a subjective intent to conceal. Rubber
Mulch and Rubber Resources further assert that proof of
a particular manufacturer’s ability to practice the claimed
invention is not sufficient to show satisfaction of the best
mode requirement, rendering that evidence irrelevant.
They also respond that each of the claims, not just claim
3, fails the best mode requirement because they all recite
a colorant.
Rubber Mulch and Rubber Resources further respond
that, as alternative bases for affirmance, the district court
erred in denying summary judgment of invalidity based
on anticipation, obviousness, indefiniteness, and none-
nablement. Thus, according to Rubber Mulch and Rubber
Resources, this court can affirm the district court’s deci-
sion by reversing its denial of summary judgment on
those other grounds, still finding the patent invalid on
summary judgment. Green Edge replies that the district
court correctly denied summary judgment on those
grounds, as genuine issues of material fact exist regarding
all of those issues.
We agree with Green Edge that the district court
erred in granting summary judgment of invalidity based
on a best mode violation, and that the court did not err in
denying summary judgment on the other invalidity
grounds; thus, summary judgment of invalidity was
improper. Regarding the best mode requirement, 35
U.S.C. § 112, paragraph 1, provides that “the specification
. . . shall set forth the best mode contemplated by the
inventor of carrying out his invention.” Thus, inventors
may not receive the benefit of the right to exclude while at
the same time concealing from the public preferred em-
bodiments of their inventions. See Teleflex, Inc. v. Ficosa
N. Am. Corp., 299 F.3d 1313, 1330 (Fed. Cir. 2002).
GREEN EDGE v. RUBBER MULCH 14
“Compliance with the best mode requirement is a ques-
tion of fact.” Ajinomoto Co. v. Int’l Trade Comm’n, 597
F.3d 1267, 1272 (Fed. Cir. 2010). The sufficiency of the
disclosure of the best mode is determined as of the filing
date. See Application of Glass, 492 F.2d 1228, 1232
(CCPA 1974).
Determining compliance with the best mode require-
ment is a two-pronged inquiry. First, the court must
determine whether, at the time the patent application
was filed, the inventor possessed a best mode of practicing
the claimed invention. U.S. Gypsum Co. v. Nat'l Gypsum
Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). The first prong
is subjective; it focuses on the inventor’s personal prefer-
ences as of the application’s filing date. N. Telecom Ltd.
v. Samsung Elecs. Co., 215 F.3d 1281, 1286 (Fed. Cir.
2000). Second, if the inventor has a subjective preference
for one mode over all others, the court must then deter-
mine whether the inventor “concealed” the preferred mode
from the public. Chemcast Corp. v. Arco Indus. Corp., 913
F.2d 923, 928 (Fed. Cir. 1990). The second prong asks
whether the inventor has disclosed the best mode and
whether the disclosure is adequate to enable one of ordi-
nary skill in the art to practice the best mode of the
invention. Id. The second inquiry is objective; it depends
upon the scope of the claimed invention and the level of
skill in the relevant art. Id.
In this case, the parties do not seriously dispute that
the inventors of the ’514 patent possessed a best mode of
practicing the claimed invention, viz., using Futura’s
24009 product as the claimed colorant. Green Edge,
however, asserts that it disclosed that mode; it did not
conceal it from the public. The question thus relates to
the second inquiry, whether Green Edge disclosed its best
mode when it disclosed a material by a name that did not
15 GREEN EDGE v. RUBBER MULCH
exist and failed to identify the material that it actually
used in its own work.
We have held that an inventor using a proprietary
product in his preferred embodiment must, “at a mini-
mum, . . . provide supplier/trade name information in
order to satisfy the best mode requirement.” U.S. Gyp-
sum, 74 F.3d at 1214 (citing Chemcast, 913 F.2d at 929).
The purpose of the requirement of a supplier and a trade
name is to allow the public to practice the inventor’s best
mode at the time of filing. Thus, in Chemcast, 913 F.2d at
929–30, and U.S. Gypsum, 74 F.3d at 1213–16, we held
that the inventor had not disclosed the best mode because
the inventor in each of those cases had not provided a
description sufficient to allow a skilled artisan to know or
carry out the best mode. In those cases, the identity of
the material in question was a trade secret of the sup-
plier, and the inventor did not know its identity, so it
could not objectively disclose the best mode. In this case,
the facts are similar, but there is a genuine issue as to
whether the name “Visichrome” was descriptive of a
sufficiently specific product so that one seeking to obtain
and practice the best mode of the invention, product
number 24009, would have succeeded.
The disclosure might have, at the time the application
was filed, been specific enough to describe the colorant so
as to enable a person of ordinary skill in the art to make
the claimed product using Futura’s 24009 product. The
application for the ’514 patent was filed in October 1997,
and Jarboe’s letter describing Futura’s “Visichrome”
colorant system was written in July 1997. Thus, despite
Jarboe’s inability to remember why he used the term
“Visichrome” in his letter, see Best Mode Op., 2008 U.S.
Dist. Lexis 23378, at *12, it is at least possible, even
likely, that in October 1997, at the time of filing, someone
contacting Futura to obtain the “Visichrome” colorant
GREEN EDGE v. RUBBER MULCH 16
system would have received a response similar to Jarboe’s
letter of that July. Indeed, the district court stated that
the name “Visichrome” combined with the ability to
contact Futura “would have enabled a person to obtain
the colorant.” Id. at *15–16 n.1. The colorant described
in the letter appeared to be a specific formulation that
could be made in a variety of different colors. Thus, the
name “Visichrome” supplied in the ’514 patent would not
have described the precise color preferred by the inven-
tors, but it could have allowed a person to obtain a prod-
uct with the best formulation. The person contacting
Futura could then have requested the “earth tone colors”
described in the ’514 patent. See ’514 patent col.5 l.2.
We therefore agree with Green Edge that there was a
genuine issue of material fact relating to whether the best
mode was disclosed, precluding summary judgment of
invalidity. The Jarboe letter, viewed in a light most
favorable to Green Edge, shows that at the time of filing,
a person of ordinary skill could have contacted Futura,
inquired of the identity of Visichrome, and been led to the
24009 product, which the parties do not dispute consti-
tuted the best mode. Such a determination should be
made by the district court, not by this court.
We further conclude that the district court did not err
in not granting summary judgment of invalidity on the
separate grounds of anticipation, obviousness, indefinite-
ness, or nonenablement. The record is insufficient for us
to determine that the court should have granted summary
judgment. “Whether a patent is anticipated under section
102(b) is a question of fact. On summary judgment, all
justifiable inferences are made in favor of the non-
movant.” Schumer v. Lab. Computer Sys., 308 F.3d 1304,
1315 (Fed. Cir. 2002). Here, we agree with the district
court that there were genuine issues of material fact
regarding anticipation, as Rubber Mulch and Rubber
17 GREEN EDGE v. RUBBER MULCH
Resources must prove that the “unconsolidated fall zone
material” of Jakubisin, see Jakubisin Abstract, is “de-
signed . . . to look like natural mulch,” see ’514 patent
col.6 ll.4–5. Rubber Mulch and Rubber Resources argue
that Jakubisin inherently anticipates the ’514 patent
because it discloses rubber particles that otherwise con-
tain the claimed features and therefore must inherently
“look like natural mulch.” While Jakubisin does appear to
disclose a product that is similar to the claimed mulch, we
cannot say as a matter of law that it anticipates the ’514
patent, especially given the district court’s reluctance to
so hold and the lack of analysis of the other claim limita-
tions.
Similarly, we agree with the district court that there
were genuine issues of material fact precluding summary
judgment of invalidity based on Green Edge and other
retailers’ earlier sales of mulch. The district court found
Rubber Mulch and Rubber Resources’ evidence insuffi-
ciently corroborated and found conflicting evidence, which
requires resolution by a jury. See Denial of SJ of Antici-
pation, 2007 U.S. Dist. Lexis 1939, at *14–15. Thus, the
prior sales do not justify our holding the ’514 patent
invalid as a matter of law.
We further agree with the district court that genuine
issues of material fact precluded it from granting sum-
mary judgment of obviousness. A patent is invalid when
“the differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103(a). Obviousness is a question
of law based on underlying questions of fact. Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir.
2000). The underlying factual inquiries in an obviousness
analysis include: “(1) the scope and content of the prior
GREEN EDGE v. RUBBER MULCH 18
art; (2) the level of ordinary skill in the prior art; (3) the
differences between the claimed invention and the prior
art; and (4) objective evidence of nonobviousness.” In re
Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999). The
district court held that there were such factual questions,
precluding summary judgment of obviousness. For exam-
ple, according to the court, Green Edge provided evidence
that, “while other synthetic mulch products were avail-
able, they did not resemble natural mulch.” Denial of SJ
of Anticipation, 2007 U.S. Dist. Lexis 1939, at *17. As the
district court stated, “a jury should determine whether
there are differences between the prior art and the
claimed invention, among other factual inquiries.” Id.
Rubber Resources and Rubber Mulch argue that the
claims of the ’514 patent would have been obvious based
on the combination of U.S. Patent 5,396,731 (“Byrne”) and
Jakubisin, as Byrne discloses a pad made from rubber
granules that “is desired to appear mulch-like.” Byrne
col.4 l.39. However, Rubber Mulch and Rubber Resources
did not assert Byrne in their May 2006 motion for sum-
mary judgment of obviousness. See Mem. of P. & A. in
Supp. of Defs. Rubber Mulch Etc. and Rubber Resources
Ltd’s Mot. for Summ. J., May 15, 2006. Thus, the district
court could not have relied on Byrne at that time. Rubber
Mulch and Rubber Resources later asserted Byrne, in
their July 2007 renewed motion, see Post Markman
Ruling Mem. of P. & A. in Supp. of Defs. Rubber Mulch
Etc. and Rubber Resources Ltd’s Mot. for Summ. J., July
2, 2007, but the district court did not address those obvi-
ousness assertions, as it instead granted summary judg-
ment on the best mode violation, Best Mode Op., 2008
U.S. Dist. Lexis 23378, at *17. Without any record from
the district court on that issue, we cannot determine
whether the ’514 patent’s claims would have been obvious
to one of ordinary skill in the art. We must therefore
19 GREEN EDGE v. RUBBER MULCH
remand for the district court to determine the obviousness
question in the first instance. See Medichem, S.A. v.
Rolabo, S.L., 353 F.3d 928, 935 (Fed. Cir. 2003) (holding
that, without any of the necessary factual determinations
underlying an obviousness inquiry, the appellate court
could not undertake any review in the first instance).
We also decline to determine as a matter of law that
the ’514 patent is indefinite or nonenabled. Definiteness,
under 35 U.S.C. § 112, paragraph 2, and enablement,
under paragraph 1, are both questions of law with under-
lying factual determinations. See Janssen Pharmaceutica
N.V. v. Teva Pharms. USA, Inc. (In re ’318 Patent In-
fringement Litig.), 583 F.3d 1317, 1323 (Fed. Cir. 2009)
(“Enablement is a question of law we review without
deference. We review the factual issues underlying
enablement for clear error.” (citations omitted)); Young v.
Lumenis, Inc., 492 F.3d 1336, 1344–45 (Fed. Cir. 2007)
(stating that a showing of indefiniteness requires clear
and convincing evidence). The district court denied
summary judgment of invalidity as to both issues based
on insufficient evidence. Denial of SJ of Anticipation,
2007 U.S. Dist. Lexis 1939, at *17–21.
We will not undertake the indefiniteness and enable-
ment inquiries in the first instance. The district court did
not address Rubber Mulch and Rubber Resources’ argu-
ment that the claim term “looks like” is indefinite. We
have held that similar terms relating to appearance, if
sufficiently defined in the specification, are not necessar-
ily indefinite. See Oakley, Inc. v. Sunglass Hut Int’l, 316
F.3d 1331, 1340–42 (Fed. Cir. 2003) (holding the term
“vivid color appearance” not indefinite when the specifica-
tion presented a formula for calculating the differential
effect for a number of examples, which determined
whether or not they had a “vivid colored appearance”).
GREEN EDGE v. RUBBER MULCH 20
Thus, we leave to the district court the initial determina-
tion of the definiteness or indefiniteness of the term.
As for Rubber Mulch and Rubber Resources’ assertion
that the ’514 patent does not enable making a product
that “imitates natural mulch,” the district court appropri-
ately found that others’ ability to obtain a claimed color-
ant from Futura or to make their own colorant precluded
summary judgment of nonenablement. The district court
incorrectly looked at enablement at the time of its deci-
sion, see Denial of SJ of Anticipation, 207 U.S. Dist. Lexis
1939, at *20 (finding “no indication that, nearly ten years
after the issuance of the ’514 patent, any experimentation
to recreate the colorant would be unduly extensive” (em-
phasis added)), rather than at the time of filing, see
Janssen, 583 F.3d at 1323 (“Enablement is determined as
of the effective filing date of the patent’s application.”).
However, the court appropriately denied summary judg-
ment because Green Edge’s evidence might allow a jury to
find the invention enabled at the time of filing. We there-
fore agree with Green Edge that we cannot uphold sum-
mary judgment of invalidity on the alternative ground
that the claims were not enabled.
In sum, the district court erred in granting summary
judgment of invalidity of the ’514 patent as a violation of
the best mode requirement. For the reasons stated above,
we cannot affirm the court’s decision on the alternative
grounds of anticipation, obviousness, indefiniteness, or
nonenablement. We therefore reverse the court’s grant of
summary judgment of invalidity and remand for further
proceedings.
21 GREEN EDGE v. RUBBER MULCH
B. The District Court Erred by
Dismissing Rubber Mulch’s
Trademark Counterclaims
On cross-appeal, Rubber Mulch and Rubber Resources
assert that the district court erred by dismissing their
trademark counterclaims of noninfringement and invalid-
ity of the “RUBBERIFIC MULCH” mark for lack of a case
or controversy. Rubber Mulch argues that there was an
actual controversy regarding the mark, as Green Edge
had asserted an infringement claim against Rubber
Mulch, and International Mulch, the mark’s assignee, had
sent Rubber Mulch a cease and desist letter. Rubber
Resources argues that because it also intends to continue
using its products containing the words “Rubber Mulch,”
the court has declaratory judgment jurisdiction over its
counterclaim as well. Both parties also assert that there
are unresolved issues regarding the mark’s ownership,
validity, and enforceability. Rubber Mulch and Rubber
Resources further argue that there is a factual dispute as
to whether Green Edge’s amendment of its registration
statement, changing the first use of “RUBBERIFIC
MULCH” from October 1995 to October 1997, to avoid the
on-sale bar in its application for the ’514 patent, was
undertaken in bad faith; thus, they argue, the issue is not
ripe for summary judgment.
International Mulch and Green Edge respond that
Rubber Mulch stated that it did not intend to use the
term “RUBBER MULCH” as a trademark, resolving any
previous dispute. International Mulch and Green Edge
also argue that Rubber Mulch has no standing in this
appeal because it abandoned the claims that were the
subject of the appealed orders when it did not respond to
the district court’s June 2008 order requesting a status
report. International Mulch and Green Edge both further
respond that they had no dispute with Rubber Resources.
GREEN EDGE v. RUBBER MULCH 22
We conclude that the district court erred in dismiss-
ing Rubber Mulch’s counterclaims as to the validity and
enforceability of the “RUBBERIFIC MULCH” mark, but
did not err in dismissing Rubber Resources’ trademark
counterclaims. The Declaratory Judgment Act provides
the courts with jurisdiction over declaratory judgment
actions when there is a justiciable case or controversy.
MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 126–27
(2007) (citing 28 U.S.C. § 2201(a)). When such jurisdic-
tion exists, a court “may declare the rights and other legal
relations of any interested party.” 28 U.S.C. § 2201(a)
(emphasis added). Thus, we review a court’s legal deter-
mination whether there is declaratory judgment jurisdic-
tion de novo, Micron Tech., Inc. v. Mosaid Techs., Inc., 518
F.3d 897, 900 (Fed. Cir. 2008), and we review its decision
to exercise that jurisdiction for an abuse of discretion,
Wilton v. Seven Falls Co., 515 U.S. 277, 286 (1995). In
this case, the court determined that there was no case or
controversy, a decision that we review de novo.
A controversy exists when “the facts alleged, under all
the circumstances, show that there is a substantial con-
troversy, between parties having adverse legal interests,
of sufficient immediacy and reality to warrant the issu-
ance of a declaratory judgment.” MedImmune, 549 U.S.
at 127. The Supreme Court has held that, in the patent
infringement context, there is not even a need for a party
to have a “reasonable apprehension of suit.” See id. at
132 n.11.
In this case, Rubber Mulch’s trademark noninfringe-
ment and invalidity counterclaims were pled in response
to Green Edge’s trademark infringement claims against
it. Thus, there was more than an apprehension of suit
from Green Edge; Rubber Mulch had actually been sued.
A fortiori, a party that has been sued for trademark
infringement has established declaratory judgment juris-
23 GREEN EDGE v. RUBBER MULCH
diction to allege noninfringement and invalidity. To hold
otherwise would prevent a defendant from raising de-
fenses to the charge against it. See 10B Charles Alan
Wright, Arthur R. Miller & Mary Kay Kane, Federal
Practice and Procedure § 2761 (3d ed. 1998 & Supp. 2010)
(“[E]ven if the [trademark owner] sues for infringement,
defendant may counterclaim for a declaration of invalidity
and noninfringement. In that way, the defendant is
protected against the possibility that the [trademark
owner] will dismiss the suit or that the infringement
action will not resolve all of the issues between the par-
ties.”). 4 Rubber Mulch therefore properly established
declaratory judgment jurisdiction with respect to Green
Edge.
Rubber Mulch also properly established the court’s
declaratory judgment jurisdiction over its counterclaim
against International Mulch. International Mulch had
threatened Rubber Mulch with suit over the
“RUBBERIFIC MULCH” trademark, asserting that, as
the assignee of the mark, it had standing to sue. Under
MedImmune, a threat of suit in the form of a cease and
desist letter, in addition to other litigious conduct, is
sufficient to confer declaratory judgment jurisdiction. See
Micron, 518 F.3d at 901 (holding that, under MedIm-
mune, declaratory judgment jurisdiction existed based on
4 International Mulch asserted at oral argument
that Green Edge is prepared to dismiss its trademark
claims against Rubber Mulch. See Oral Arg. 21:06–18, June 11,
2010, available at http://oralarguments.cafc.uscourts.gov/mp3/2009-1455.mp3.
However, even if that assertion were true, such a dis-
missal would not rob the court of its declaratory judgment
jurisdiction over Rubber Mulch, as Rubber Mulch must
remain “protected against the possibility that [Interna-
tional Mulch] will dismiss the suit.” 10B Charles Alan
Wright, Arthur R. Miller & Mary Kay Kane, Federal
Practice and Procedure § 2761.
GREEN EDGE v. RUBBER MULCH 24
a cease and desist letter plus defendant’s suits against
other manufacturers); see also Bancroft & Masters, Inc. v.
Augusta Nat’l Inc., 223 F.3d 1082, 1085 (9th Cir. 2000)
(finding declaratory judgment jurisdiction based on
trademark owner’s cease and desist letter despite the fact
that trademark owner offered to waive all trademark
infringement and related claims), overruled on other
grounds by Yahoo! Inc. v. La Ligue Contre Le Racisme,
433 F.3d 1199, 1206–07 (9th Cir. 2006) (en banc). Here,
International Mulch not only threatened suit, but it is the
alleged assignee of Green Edge’s trademark, and Green
Edge already filed suit for infringement of that trade-
mark. Thus, if International Mulch is found to be the
legitimate assignee, only International Mulch has stand-
ing to sue for infringement. See AsymmetRx, Inc. v.
Biocare Med., LLC, 582 F.3d 1314, 1318 (Fed. Cir. 2009)
(stating that, in patent infringement context, “a suit for
infringement ordinarily must be brought by a party
holding legal title to the patent”). Moreover, Interna-
tional Mulch is already a party to this suit. Therefore, if
Green Edge is ultimately found not to have standing to
pursue its infringement claim, International Mulch may
be in a position to be substituted for Green Edge as the
real party in interest. See Signal Int’l LLC v. Miss. Dep’t
of Transp., 579 F.3d 478, 487 (5th Cir. 2009) (“Although
an action must be prosecuted by the real party in interest,
‘[t]he court may not dismiss an action for failure to prose-
cute in the name of the real party in interest until, after
an objection, a reasonable time has been allowed for the
real party in interest to ratify, join, or be substituted into
the action.’” (quoting Fed. R. Civ. P. 17(a)(3))). Such a
possibility, especially given International Mulch’s actual
threat of suit in its cease and desist letter, constitutes a
threat or controversy of “sufficient immediacy and reality
to warrant the issuance of a declaratory judgment.”
MedImmune, 549 U.S. at 127.
25 GREEN EDGE v. RUBBER MULCH
International Mulch’s argument that Rubber Mulch
did not intend to use the term “RUBBER MULCH” as a
trademark is disingenuous. The district court found that
Rubber Mulch intended “to continue using the term
rubber mulch.” Trademark Dismissal, 509 F. Supp. 2d at
820. International Mulch misinterprets Rubber Mulch’s
assertion that the term “rubber mulch” is descriptive; that
assertion does not suggest that Rubber Mulch is not going
to use the term but rather goes to either the invalidity or
lack of infringement of the mark “RUBBERIFIC
MULCH.” Both grounds are defenses to a trademark
infringement suit, but the existence of those defenses does
not preclude a case or controversy. Indeed, Green Edge
and International Mulch have both accused Rubber Mulch
of infringing a valid trademark, which is the hallmark of
an actual controversy. Because neither Green Edge nor
International Mulch has conceded either invalidity or lack
of infringement of its trademark, a case or controversy
exists.
We also disagree with International Mulch and Green
Edge’s assertion that Rubber Mulch has no standing to
appeal based on the district court’s dismissal of Rubber
Mulch’s claims for failure to prosecute, Rubber Mulch
Dismissal, 2008 U.S. Dist. Lexis 55402. The court first
dismissed Rubber Mulch’s trademark claims for lack of a
case or controversy and then later dismissed all of Rubber
Mulch’s claims for failure to prosecute. At the time the
court found a failure to prosecute, however, Rubber Mulch
could not have prosecuted its trademark claims because
those claims were no longer in the case, having previously
been dismissed for lack of a case or controversy. There-
fore, the court’s dismissal of Rubber Mulch’s claims for
failure to prosecute cannot include the trademark claims.
Rubber Mulch cannot be punished for failure to pursue
claims that were then no longer in the case. For at least
GREEN EDGE v. RUBBER MULCH 26
that reason, Rubber Mulch has standing to appeal the
court’s dismissal of its trademark counterclaims.
Finally, no party addressed the district court’s alter-
native holding that Rubber Mulch and Rubber Resources
had not presented sufficient evidence to show invalidity.
Given the court’s cursory treatment of and all parties’
failure to argue that point, we cannot affirm the dismissal
on that alternative basis. We therefore hold that the
district court erred in dismissing Rubber Mulch’s counter-
claims.
As for Rubber Resources’ counterclaims of nonin-
fringement and invalidity of the mark, we agree with
International Mulch and Green Edge that there was no
case or controversy giving the court declaratory judgment
jurisdiction over Rubber Resources. Unlike Rubber
Mulch, Rubber Resources had been neither sued nor
threatened with suit. Rubber Resources’ sole argument is
that it uses the same term, “rubber mulch,” for which
Rubber Mulch was sued. Although we have found a
pattern of litigation to be a factor favoring the existence of
declaratory judgment jurisdiction, see Micron, 518 F.3d at
901, in this case Rubber Resources relies on a single suit,
not a pattern. Furthermore, Green Edge, in one litiga-
tion, sued both Rubber Mulch and Rubber Resources for
patent infringement and sued Rubber Mulch alone for
trademark infringement. Presumably, if Green Edge had
wanted to sue Rubber Resources for trademark infringe-
ment, it could have included that claim in the existing
suit. Its failure to include a claim against Rubber Re-
sources for trademark infringement, despite its claims of
trademark infringement against Rubber Mulch and its
other claims against Rubber Resources in the same case,
indicated its lack of intent to sue Rubber Resources for
trademark infringement. Thus, there was no case or
27 GREEN EDGE v. RUBBER MULCH
controversy with respect to Rubber Resources regarding
its trademark counterclaims.
For the above reasons, we reverse the district court’s
holding of a lack of case or controversy with respect to
Rubber Mulch for its counterclaims of trademark invalid-
ity and lack of infringement against both Green Edge and
International Mulch. We affirm the court’s holding with
respect to Rubber Resources.
C. The District Court Abused Its
Discretion by Precluding All
Damages Evidence for the
Lanham Act Counterclaims
Finally, on cross-appeal, Rubber Resources asserts
that the district court abused its discretion by precluding
Rubber Resources from presenting evidence regarding its
Lanham Act unfair competition counterclaims. Rubber
Resources argues that its sole burden at trial with respect
to damages would be to prove Green Edge’s sales, an
amount to which the parties have stipulated. Rubber
Resources adds that it could not have proven total dam-
ages because it did not know Green Edge’s costs and
expenses, evidence which Green Edge and International
Mulch had the burden to produce. According to Rubber
Resources, it stated its theory of damages in its amended
counterclaim, seeking a constructive trust, damages,
costs, and attorney fees. Rubber Resources also argues
that it disclosed that its counterclaim was under the
Lanham Act. Rubber Resources further contends that,
three years before trial, the district court found Rubber
Resources substantially justified in not providing the
computation required by Fed. R. Civ. P. 26(a), and that
“substantial justification” is law of the case. Rubber
Resources finally argues that, instead of excluding its
evidence, the court should have excluded Green Edge and
GREEN EDGE v. RUBBER MULCH 28
International Mulch’s evidence of costs for failure to
provide it during discovery.
Green Edge and International Mulch respond that,
despite being warned by the district court, Rubber Re-
sources never stated the type, or theory, of damages it
sought. According to Green Edge and International
Mulch, Rubber Resources did not even state that it sought
damages under the Lanham Act. Green Edge and Inter-
national Mulch argue that, to establish a prima facie case
under the Lanham Act, Rubber Resources would have to
prove its damages. Further, Green Edge and Interna-
tional Mulch assert that Rubber Resources has mischar-
acterized the court’s earlier order as holding that its
damages disclosures were adequate; in fact, the court
warned that evidence might later be excluded. Finally,
Green Edge and International Mulch respond that Rubber
Resources stated that a sales summary would have been
sufficient, and Green Edge produced a sales summary, so
their production of evidence was sufficient.
We agree with Rubber Resources that the district
court abused its discretion by excluding all of Rubber
Resources’ evidence of damages. “Whether proffered
evidence should be admitted in a trial is a procedural
issue not unique to patent law, and therefore we review
the district court’s decision whether to admit [evidence]
under the law of the regional circuit,” here the Eighth
Circuit. Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387,
1390–91 (Fed. Cir. 2003). The Eighth Circuit reviews the
district court’s decision to exclude evidence for abuse of
discretion, reversing only if it “was based on an erroneous
view of the law or a clearly erroneous assessment of the
evidence.” Trost v. Trek Bicycle Corp., 162 F.3d 1004,
1008 (8th Cir. 1998) (quotation marks omitted).
29 GREEN EDGE v. RUBBER MULCH
Federal Rule of Civil Procedure 26(a) states that “a
party must, without awaiting a discovery request, provide
to the other parties . . . a computation of each category of
damages claimed.” Rule 37(c)(1) further states that a
party’s failure to provide the information required by Rule
26(a) means the party may not use that information at
trial “unless the failure is substantially justified or is
harmless.” See also Trost, 162 F.3d at 1008. In this case,
the district court clearly erred in concluding that Rubber
Resources had failed to provide a computation of every
category of damages claimed. The court found that Rub-
ber Resources had failed to disclose its theory of damages
when, in fact, it had enumerated certain categories of
damages in its amended counterclaim, viz., Green Edge
and International Mulch’s profits, Rubber Resources’
damages, and “exemplary damages,” all under the
Lanham Act, 15 U.S.C. § 1125. The Lanham Act enumer-
ates the possible damages to which Rubber Resources
might be entitled for unfair competition, providing that a
violation under 15 U.S.C. § 1125(a) entitles the plaintiff
“to recover (1) defendant’s profits, (2) any damages sus-
tained by the plaintiff, and (3) the costs of the action. . . .
In assessing profits the plaintiff shall be required to prove
defendant’s sales only; defendant must prove all elements
of cost or deduction claimed.” 15 U.S.C. § 1117(a).
Furthermore, Rubber Resources and Green Edge had
agreed upon a calculation of Green Edge’s sales. Al-
though a determination of Green Edge’s profits requires
subtracting its costs from its gross sales income, Green
Edge must present its own evidence of its costs. See id.
The district court acknowledged that the burden of prov-
ing damages is relaxed in Lanham Act cases, but stated
that proof of damages is a separate requirement from
disclosure of damages under Rule 26(a). 2009 Damages
Op., 2009 U.S. Dist. Lexis 41302, at *13 n.9. However,
GREEN EDGE v. RUBBER MULCH 30
the court’s distinction is not persuasive. The purpose
behind the relaxed burden of proof, viz., difficulty for the
plaintiff to ascertain the amount of damages, see id.,
cannot be served without similarly relaxing the burden of
disclosure under Rule 26(a). Thus, contrary to the district
court’s second order, 2009 Damages Op., 2009 U.S. Dist.
Lexis 41302, Rubber Resources should be permitted to
present evidence of Green Edge’s sales at trial to prove
Green Edge’s profits.
Rubber Resources does not argue that it presented a
calculation of its damages or of the “exemplary damages”
it sought, and the district court did not clearly err in
excluding evidence of either of those forms of damages.
However, should Rubber Resources prevail at trial, it is
entitled to recover Green Edge’s profits. Because Rubber
Resources provided a stipulated calculation of Green
Edge’s sales, the court clearly erred in excluding all
evidence of damages. We therefore reverse the court’s
exclusion of damages evidence, 2009 Damages Op., 2009
U.S. Dist. Lexis 41302. We also reverse the court’s dis-
missal of Rubber Resources’ Lanham Act claims for an
inability to prove damages, Lanham Act Dismissal, 2009
U.S. Dist. Lexis 53411, as that dismissal was based on the
clearly erroneous exclusion of all damages evidence, 2009
Damages Op., 2009 U.S. Dist. Lexis 41302.
We have considered the parties’ remaining arguments
and do not find them persuasive.
CONCLUSION
The judgment of the district court is
AFFIRMED IN PART, REVERSED IN PART, and
REMANDED
31 GREEN EDGE v. RUBBER MULCH
COSTS
No costs.