United States District Court, E.D. Virginia, Richmond Division
E. Payne, Senior United States District Judge
matter is before the Court on DEFENDANT/COUNTER-PLAINTIFF
JELD-WEN, INC.'S MOTION TO VOLUNTARILY DISMISS
COUNTERCLAIMS WITHOUT PREJUDICE (ECF No. 457). For the
reasons set forth below, the motion was denied.
action was filed on June 29, 2016 after the failure of a
contractually mandated mediation process. Complaint (ECF No.
5) (Under Seal). Steves and Sons, Inc. ("Steves")
alleged several claims against JELD-WEN, Inc.
("JELD-WEN"). In COUNT ONE, Steves alleged a
violation of the Clayton Act, Section 7, 15 U.S.C. § 18.
In COUNT TWO, Steves alleged a breach of contract arising out
of a 2012 long-term doorskin supply agreement between Steves
and JELD-WEN ("the Supply Agreement"). In COUNT
THREE, Steves alleged a breach of warranty, both express and
implied. In COUNT FOUR, Steves sought a declaratory judgment
as to certain rights under the Supply Agreement and the
putative termination of that contract. Id.
filed a motion to dismiss COUNT ONE, which was denied and, on
August 5, 2016, JELD-WEN filed its Answer to the Complaint.
ECF Nos. 30 (Under Seal), 64. At a pretrial conference on
October 19, 2016, the matter was set for trial to begin on
June 12, 2017, and a detailed schedule for the conduct of
pretrial proceedings was thereafter implemented. ECF No. 65.
Pursuant to that schedule, the parties engaged in extensive
March 27, 2017, JELD-WEN sought leave to amend its Answer and
to add counterclaims against Steves, which were asserted
"to address JELD-WEN's recent discovery of
Steves' theft of JELD-WEN trade secrets and confidential
information, " the alleged theft of which had been
discovered by virtue of documents produced during litigation.
ECF No. 101 at 1-2. The counterclaims were predicated upon
the assertion that Steves-through its principal officers,
Edward Steves and Sam Steves II ("the Steves
Brothers")-along with two former JELD-WEN employees,
John Pierce ("Pierce") and John Ambruz
("Ambruz"), had engaged in a conspiracy and had
stolen trade secrets from JELD-WEN respecting how to build
and operate a doorskin plant that could produce products of
the type that Steves was buying from JELD-WEN under the
asserted the following proposed counterclaims under federal
and Texas law: FIRST COUNTERCLAIM FOR RELIEF, Violation of
the Defend Trade Secrets Act, 18 U.S.C. § 1836; SECOND
COUNTERCLAIM FOR RELIEF, Conspiracy to Violate Defend Trade
Secrets Act, 18 U.S.C. § 1832(a)(5); THIRD COUNTERCLAIM
FOR RELIEF, Violation of the Texas Uniform Trade Secret Act,
Texas Civil Practice & Remedies Code Annotated
§§ 134A.001 -134A.008; FOURTH COUNTERCLAIM FOR
RELIEF, Tortious Interference with Contract Under Texas
Common Law; FIFTH COUNTERCLAIM FOR RELIEF, Tortious
Interference with Contract Under Texas Common Law; SIXTH
COUNTERCLAIM FOR RELIEF, Breach of the Implied Covenant of
Good Faith and Fair Dealing Under Delaware Law; and SEVENTH
COUNTERCLAIM FOR RELIEF, Breach of Contract. Proposed
Counterclaims (ECF No. 106) (Under Seal) ¶¶ 41-78.
vigorously opposed the addition of the counterclaims, arguing
that the putative counterclaims should be brought in San
Antonio, Texas where Steves, Pierce, and Ambruz could be
sued. PLAINTIFF'S MEMORANDUM IN OPPOSITION TO DEFENDANT
JELD-WEN, INC.'S MOTION FOR LEAVE TO AMEND ANSWER (ECF
No. 117) at 14. At oral argument on the motion for leave to
add the counterclaims, Steves continued to argue that the
counterclaims should be pursued in Texas, not in this case.
JELD-WEN continued to advocate zealously for prosecution of
the counterclaims in this action.
17, 2017, the Court allowed JELD-WEN to proceed with the
counterclaims in this forum. At the same time, however, the
Court ordered that the trade secrets counterclaims be tried
separately from the antitrust claims. ECF Nos. 239-240. The
parties subsequently continued with discovery and were asked
to comment about the sequencing of Steves' antitrust and
contract claims and JELD-WEN's counterclaims. Trial for
the counterclaims was set to begin on February 12, 2018. ECF
after briefing and argument on the topic, on September 13,
2017, Steves' motion to dismiss the Second, Sixth, and
Seventh Counterclaims was granted. Those counterclaims were
dismissed with prejudice. ECF Nos. 353-354.
thereafter, counsel for Steves and counsel for JELD-WEN asked
the Court to move the trial in the trade secrets case to
April 2018 based on representations that the same lawyers
would be involved extensively in the trial of the antitrust
claims in January 2018, and could not adequately prepare for
trial of the trade secrets counterclaims beginning on
February 12, 2018. ECF No. 352. Because of these entreaties,
and only because of these entreaties, the Court moved the
trial of JELD-WEN's counterclaims to April 9, 2018. ECF
September 26, 2017, JELD-WEN filed an action in Texas state
court wherein it asserted its trade secret claims and certain
related claims against the Steves Brothers and Pierce. That
complaint contained the following claims under Texas law:
COUNT ONE, Violation of the Texas Uniform Trade Secrets Act,
CPRC § 134A, against all defendants; COUNT TWO,
Conspiracy to Violate Texas Uniform Trade Secrets Act, CPRC
§ 134A, against all defendants; COUNT THREE, Breach of
Contract, against Pierce; COUNT FOUR, Tortious Interference
with Contract, against the Steves Brothers; COUNT FIVE,
Tortious Interference, against Pierce; COUNT SIX, Breach of
Fiduciary Duty, against Pierce; and COUNT SEVEN, Aiding and
Abetting Breach of Fiduciary Duty, against the Steves
Brothers. Texas Petition (ECF No. 403-1) ¶¶ 53-70.
on October 23, 2017, JELD-WEN voluntarily moved to dismiss
its counterclaims in this case. ECF No. 457. After briefing
on that motion had been completed, JELD-WEN filed an amended
complaint in the Texas case that removed several claims from
the original complaint: namely, Count One, Count ...