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WO 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA 

Glacier Pool Coolers LLC, et al.,

Plaintiffs, 

v. 

Cooling Tower System Incorporated, 

Defendant. 

No. CV-15-02338-PHX-DLR

ORDER 

 Before the Court is Plaintiffs Glacier Pool Coolers LLC and RAM Innovations 

LLC’s (collectively Glacier) Motion for Leave to Amend Complaint and Request to Set 

Scheduling Conference, (Doc. 31), and Defendant Cooling Tower System Inc.’s (CTS) 

Cross-Motion for Leave to Amend Answer and Counterclaim, (Doc. 32). Glacier has 

also filed a motion to continue deadlines. (Doc. 37.) For the following reasons, Glacier’s 

motion to amend is granted, CTS’ motion to amend is denied, and Glacier’s motion to 

continue deadlines is denied. 

BACKGROUND 

 In November 2015, Glacier filed suit against CTS alleging, inter alia, patent 

infringement, common law unfair competition, and breach of contract/request to compel 

arbitration arising out of CTS’ sale of pool cooling devices. (Doc. 1.) The patent at issue 

involves a special method of installing the pool coolers (‘589 Patent). (Id., ¶ 1.) In 

January 2016, CTS answered the complaint and alleged a counterclaim for breach of 

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contract. (Doc. 16.) During discovery, Glacier learned that CTS had not sold any pool 

coolers, and that on April 28, 2016, CTS took down the website on which the allegedly 

infringing pool coolers had been advertised. Consequently, Glacier sought leave to 

dismiss the patent infringement claim and add a claim for intentional interference with a 

contract. (Doc. 31.) CTS opposed the motion and moved to amend its counterclaim to 

add a claim for a declaratory judgment of non-infringement. (Doc. 32.) In response, 

Glacier covenanted not to sue CTS “with respect to any of CTS’s alleged past or present 

infringement with respect to [the ‘589 Patent].” (Doc. 36 at 7.) 

 On June 22, 2016, CTS sold a pool cooler. (Doc. 39-1.) The Court ordered 

Glacier to file a sur-reply to address whether the sale of a pool cooler, without 

instructions regarding the patented method of installation, constituted infringement. 

(Doc. 45.) In response, Glacier stated that the sale did not infringe on its patent given 

that CTS did not include instructions regarding the patented method of installation. (Doc. 

46 at 2.) 

MOTIONS TO AMEND 

I. Legal Standard 

The scheduling order entered in this matter set the deadline for amending 

pleadings for March 31, 2016. The deadline has passed, and thus Fed. R. Civ. P 16(b) 

requires that the parties demonstrate good cause to amend their respective pleadings. See 

Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 607-08 (9th Cir. 1992) (“Once the 

district court had filed a pretrial scheduling order pursuant to [Rule 16,] which 

established a timetable for amending pleadings[,] that rule’s standards controlled.). 

“Unlike Rule 15(a)’s liberal amendment policy which focuses on the bad faith of the 

party seeking to interpose an amendment and the prejudice to the opposing party, Rule 

16(b)’s ‘good cause’ standard primarily considers the diligence of the party seeking the 

amendment.” Id. at 609. The Court may consider the following factors in determining 

whether to grant a motion to amend: “(1) bad faith, (2) undue delay, (3) prejudice to the 

opposing party, (4) futility of amendment[,] and (5) whether [the party] has previously 

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amended [the] complaint.” Allen v. City of Beverly Hills, 911 F.2d 367, 373 (9th Cir. 

1990). 

II. Glacier’s Motion 

 CTS does not oppose Glacier’s request to dismiss its patent infringement and 

unfair competition claims. As such, Glacier’s motion is granted in that respect. 

Regarding Glacier’s request to include an intentional interference with contractual 

relations claim, CTS argues that Glacier fails to demonstrate good cause because “the 

facts giving rise to the amendments were known when the complaint was originally 

filed.” (Doc. 32 at 2.) CTS also argues that the claim is futile because it is speculative 

and barred by the economic loss doctrine. The Court disagrees.1

 

 In the amended complaint, Glacier alleges the following: 

Since April 2015, CTS has supplied several Glacier pool coolers to Glacier 

customers. Upon information and belief, CTS has intentionally and with an 

evil mind provided Glacier’s customers with substandard and deficient pool 

coolers. In at least once instance, CTS shipped a pool cooler directly to a 

Glacier customer that had an exposed wire. When the pool cooler was 

installed, the exposed wire caused the installer to be shocked. . . . When 

CTS was alerted to this issue, CTS accepted the return of the pool cooler 

and shipped a replacement pool cooler directly to the customer. The 

replacement pool cooler was clearly damaged. At least three pool coolers 

that CTS shipped directly to Glacier customers have been damaged when 

received by the customer. . . . The conduct described in the above 

paragraphs caused Glacier to loss [sic] at least one significant customer, 

SCP Distributors LLC. As Glacier’s supplier, CTS had knowledge of 

Glacier’s contractual relationship with SCP Distributors LLC. SCP 

Distributors LLC has refused to do business with Glacier since SCP 

Distributors LLC received the pool coolers described above. Upon 

information and belief, these pool coolers were intentionally damaged by 

CTS in order to cause Plaintiffs to lose customers, like SCP Distributors 

LLC. 

 

1

 There is no evidence that Glacier delayed in raising this claim. Although the underlying facts may have been known to Glacier when it filed the original complaint, it was not until after discovery that it learned CTS was not infringing the ‘589 Patent, and 

thus its unfair competition claim was unnecessary. As such, CTS’ argument is unpersuasive. 

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(Doc. 31-1 at 15-16.) These allegations plausibly allege the elements of a claim for 

intentional interference with contractual relations. See Wagenseller v. Scottsdale Mem’l 

Hosp., 710 P.2d 1025, 1041 (Ariz. 1985) (elements of claim include: “(1) [t]he existence 

of a valid contractual relationship or business expectancy; (2) knowledge of the 

relationship or expectancy on the part of the interferer; (3) intentional interference 

inducing or causing a breach or termination of the relationship or expectancy; and (4) 

resultant damage to the party whose relationship or expectancy has been disrupted”). In 

addition, contrary to CTS’ argument, the intent element is not based on pure speculation. 

Glacier alleges that faulty pool coolers were sent to the same customer three times, which 

resulted in the customer ceasing to do business with Glacier. This is sufficient to 

plausibly allege that CTS intended to damage Glacier’s relationship with SCP 

Distributors LLC. 

 CTS also argues the claim is barred by the economic loss doctrine. The economic 

loss doctrine “bars a party from recovering economic damages in tort unless accompanied 

by physical harm, either in the form of personal injury or secondary property damage.” 

Carstens v. City of Phx., 75 P.3d 1081, 1083 (Ariz. Ct. App. 2003). In other words, 

damages may not be recovered if the claim alleges “only economic damages resulting 

from an alleged breach of contract.” S.W. Pet Prod., Inc. v. Koch Indus., Inc., 89 F. 

Supp. 2d 1115, 1126 (D. Ariz. 2000). The doctrine, however, has rarely, if ever, been 

applied outside the product liability and construction defect contexts, see Firetrace USA, 

LLC v. Jesclard, 800 F. Supp. 2d 1042, 1052 (D. Ariz. 2010), and CTS has failed to 

persuade the Court that it should apply to this case. As such, Glacier may amend its 

complaint to include a claim for tortious interference with business relations. 

III. CTS’ Motion 

 Notwithstanding Glacier’s voluntary dismissal of its patent claims, CTS argues 

that it should be permitted to amend it counter-complaint to include a declaratory claim 

of non-infringement of the ‘589 Patent. (Doc. 32 at 9.) It asserts that Glacier continues 

to threaten an infringement action if CTS sells pool coolers. (Id.) In its reply brief, 

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Glacier stated: “Plaintiffs hereby unequivocally covenant not to sue CTS with respect to 

any of CTS’s alleged past or present infringement with respect to [the ‘589 Patent.” 

(Doc. 36 at 7.) Glacier asserts that this covenant divests the Court of subject matter 

jurisdiction over CTS’ proposed declaratory judgment claim. Furthermore, even after 

CTS sold a pool cooler, Glacier stated that such a sale did not infringe on the ‘589 Patent, 

nor would any sales that do not include instructions regarding use of the patented method 

of installation. (Doc. 46 at 2.) If CTS does not include instructions for the ‘589 Patent, 

and if Glacier agrees that a sale of a pool cooler without instructions regarding the 

method of installation does not infringe on the ‘589 Patent, the issue becomes whether 

CTS’ proposed claim involves an actual controversy for the Court to resolve. The Court 

finds that it does not. 

 Under the Declaratory Judgment Act, federal courts are permitted to “declare the 

rights and other legal relations of any interested party,” so long as there is “a case of 

actual controversy.” 28 U.S.C. § 2201. In determining jurisdiction over a declaratory 

judgment claim of non-infringement in the patent context, “the question in each case is 

whether the facts alleged, under all the circumstances, show that there is a substantial 

controversy, between parties having adverse legal interests, of sufficient immediacy and 

reality[.]” MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 127 (2007) (quoting 

Maryland Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)). “[W]hen it is 

unclear when any even arguably infringing activity will occur, a dispute will lack the 

immediacy necessary to support the exercise of declaratory judgment jurisdiction.” 

Matthews Intern. Corp. v. Biosafe Eng’g, LLC, 695 F.3d 1322, 1329-1330 (Fed. Cir. 

2012). 

True Center Gate Leasing, Inc. v. Sonoran Gate, L.L.C., 402 F. Supp. 2d 1093 (D. 

Ariz. 2005) is instructive. In that case, the court found that a covenant not to sue for past 

or present acts that infringed on a patent divested the court of subject matter jurisdiction 

over a declaratory judgment claim for non-infringement. The plaintiff, True Center, 

brought a declaratory judgment action of non-infringement of two patents held by the 

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defendant, K-Zell. Id. at 1095. Before trial, K-Zell “covenant[ed] not to sue True Center 

or its customers for infringement of the [two patents] arising out of any products or acts 

existing on or before November 1, 2005.” Id. Noting other Federal Circuit decisions 

holding that such a covenant divested the court of subject matter jurisdiction, the court 

concluded that the covenant “eliminate[d] any reasonable apprehension True Center 

might have of an imminent infringement suit.” Id. at 1097. In addition, because “[a] 

lawsuit based on future activity is, of course, not based on ‘present activity,’ . . . the fear 

of such a suit” is too speculative to justify jurisdiction over the claim. Id.2

 Glacier states that a “sale only infringes if CTS induces infringement of the 

method for pool cooling set forth in the Patent.” (Doc. 36 at 9.) CTS states that it 

“supplies no pool cooling installation instructions at all” with the pool coolers. (Doc. 32 

at 8.) At present, there is nothing to suggest CTS is infringing on the ‘589 Patent, nor is 

Glacier threatening suit. And Glacier conceded that CTS’ recent sale of a pool cooler 

does not infringe on the patent. Like True Center, Glacier’s covenant undermines any 

reasonable apprehension on the part of CTS that it faces an infringement suit by selling 

the pool coolers without instructions regarding the ‘589 Patent. Furthermore, CTS’ fear 

of an infringement suit arising out of future infringement “is not sufficient to invoke the 

Court’s declaratory judgment jurisdiction.” True Ctr., 402 F. Supp. 2d at 1097; see also

Benitec Australia, Ltd. v. Nucleonics, Inc., 495 F.3d 1340, 1346 (Fed. Cir. 2007) (finding 

the dispute lacked sufficient immediacy to support jurisdiction because it was uncertain 

as to when the declaratory plaintiff would engage in a potentially infringing activity). As 

such, the CTS may not amend its counter-complaint to add a claim for declaratory 

judgment of non-infringement. 

 

2 True Center employed the two part test set forth in Super Sack Manufacturing Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1058 (Fed. Cir. 1005), which was 

partially overruled by MedImmune in 2007. Nevertheless, the case is sufficiently analogous to the facts of this case, and thus the Court considers it persuasive authority. 

Moreover, Super Sack has “not been overruled to the extent that it established that a 

covenant not to sue in the future for products made, used, or sold in the past removes actual controversy in the present.” Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 556 

F.3d 1294, 1297 (Fed. Cir. 2009).

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 CTS relies on Revolution Eyewear, which found that a covenant not to sue was 

inadequate to divest the court of subject matter jurisdiction over a declaratory judgment 

claim of non-infringement because it did not include future sales of infringing products. 

556 F.3d at 1300. But Revolution involved a key distinction: the defendant 

unequivocally stated that it intended to market and sell the allegedly infringing product, 

and the plaintiff’s “covenant did not extend to future sales of the sale product as was 

previously sold.” Id. at 1298. Here, Glacier states that sales of pool coolers do not 

infringe on the ‘589 Patent. Implicit within Glacier’s covenant is the notion that it will 

not sue CTS for merely selling pool coolers. Only if it is discovered that CTS is selling 

pool coolers and inducing infringement, say, by providing instructions on the patented 

method of installation, will Glacier file suit. CTS has no stated present intention to do 

this, and thus Revolution Eyewear is distinguishable from this case.3

 

IV. Conclusion 

 In sum, the Court concludes that Glacier has shown good cause to amend the 

complaint with respect to the claim for intentional interference with contractual relations. 

In addition, given Glacier’s covenant not to sue, CTS’ motion to amend its countercomplaint to include a declaratory judgment claim of non-infringement is denied. 

MOTION TO EXTEND DEADLINES

 Glacier moves to continue several deadlines related to its patent claims pending 

resolution of the motions to amend. (Doc. 37.) Because the parties stipulated to 

extending some of the deadlines, (Doc. 40), and because the Court will set a scheduling 

conference by separate order to deal with these matters, the motion is denied as moot. 

 IT IS ORDERED that Plaintiffs’ motion for leave to amend complaint, (Doc. 31), 

is GRANTED, Defendant’s motion to amend, (Doc. 32), is DENIED, and Plaintiffs’

motion to extend deadlines, (Doc. 37), is DENIED. Plaintiffs must file the Amended 

 

3

 CTS also relies on Already, LLC v. Nike, Inc., 133 S. Ct. 721 (2013) for the 

proposition that the covenant must cover all future acts. But Already does not say this— it merely found that the comprehensive covenant was sufficient to divest the Court of 

subject matter jurisdiction over a declaratory judgment counter-claim for non- infringement. Id. at 728, 732. 

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Complaint within 7 days of the date of this Order. The Court will set a scheduling 

conference by separate order. 

 Dated this 27th day of July, 2016. 

Douglas L. Rayes 

United States District Judge 

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