Santana Products Inc. v. Bobrick Washroom Equipment, Inc. ( 2005 )


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  •                                                                                                                            Opinions of the United
    2005 Decisions                                                                                                             States Court of Appeals
    for the Third Circuit
    2-9-2005
    Santana Prod Inc v. Bobrick Washroom
    Precedential or Non-Precedential: Precedential
    Docket No. 03-1845
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    PRECEDENTIAL
    UNITED STATES COURT OF APPEALS
    FOR THE THIRD CIRCUIT
    Nos: 03-1845/2283/2481
    SANTANA PRODUCTS INC.,
    Appellant - No. 03-1845
    v.
    BOBRICK WASHROOM EQUIPMENT, INC.;
    BOBRICK CORPORATION; THE HORNYAK GROUP
    INC.;VOGEL SALES COMPANY; SYLVESTER &
    ASSOCIATES, LTD.;FRED SYLVESTER
    SANTANA PRODUCTS INC.,
    Appellant - No. 03-2283
    v.
    BOBRICK WASHROOM EQUIPMENT, INC.;
    BOBRICK CORPORATION; THE HORNYAK GROUP
    INC.;VOGEL SALES COMPANY; SYLVESTER &
    ASSOCIATES, LTD.;FRED SYLVESTER
    SANTANA PRODUCTS INC.
    v.
    BOBRICK WASHROOM EQUIPMENT, INC.;
    BOBRICK CORPORATION; THE HORNYAK GROUP
    INC.;VOGEL SALES COMPANY; SYLVESTER &
    ASSOCIATES, LTD.;FRED SYLVESTER
    BOBRICK WASHROOM EQUIPMENT, INC.;
    BOBRICK CORPATION,
    Appellants - No: 03-2481
    Appeal from the United States District Court
    for the Middle District of Pennsylvania
    (D.C. No. 96-cv-01794 )
    District Judge: Thomas I. Vanaskie, Chief Judge
    Argued March 23, 2004
    Before: ROTH, AMBRO and CHERTOFF, Circuit Judges
    (Opinion filed:   February 9, 2005    )
    William E. Jackson, Esquire (Argued)
    B. Aaron Schulman, Esquire
    Stites & Harbison
    1199 North Fairfax Street
    TransPotomac Plaza, Suite 900
    Alexandria, VA 22314
    Gerald J. Butler, Esquire
    142 North Washington, Suite 800
    Scranton, PA 18503
    Counsel for Appellants
    Carl W. Hittinger, Esquire (Argued)
    Stevens & Lee
    1818 Market Street, 29th Floor
    Philadelphia, PA 19103
    Walter F. Casper, Jr., Esquire
    35 South Church Street & &th Avenue
    Carbondale, PA 18403
    Counsel for Appellees
    OPINION
    ROTH, Circuit Judge:
    In order to persuade government architects to specify
    Bobrick’s toilet partitions for use in government projects,
    3
    Bobrick Washroom Equipment, Inc., 1 its architectural
    representative, the Hornyak Group, Inc., and its sales
    representative, Vogel Sales Co., were telling architects that
    the partitions of Santana Products, Inc., posed a fire hazard
    under fire safety codes. As a result, Santana brought claims
    against Bobrick, Hornyak, and Vogel for anti-trust violations
    of §§ 1 and 2 of the Sherman Act, for false advertising under
    the Lanham Act, and for state law tortious interference with
    prospective contract. The defendants allegedly violated the
    Sherman Act by conspiring to induce government architects
    to specify Bobrick’s product, which in turn created a restraint
    of trade. They allegedly violated the Lanham Act by giving
    the government architects false information about the fire
    hazards of Santana’s product. They allegedly tortiously
    interfered with a prospective contract of Santana’s by
    inducing an architect to specify Bobrick’s product and remove
    Santana’s product from a specification.
    The defendants asserted numerous defenses. For
    example, they contended that they could not be held liable for
    Santana’s claims because they were merely petitioning the
    government about a safety matter, an action which was
    protected by the First Amendment of the U.S. Constitution.
    They also challenged the timeliness of Santana’s claims,
    arguing that the claims were barred either by the statute of
    limitations or the doctrine of laches. The District Court
    granted summary judgment in favor of the defendants on the
    Sherman Act claims and the tortious interference with
    prospective contract claim and denied defendants’ motion for
    summary judgment on Santana’s Lanham Act claim. Santana
    Products, Inc. v. Bobrick Washroom Equipment, Inc., 
    249 F.Supp. 2d 463
     (M.D. Pa. 2003). We will affirm the District
    1
    Bobrick Corporation is the parent company of Bobrick
    Washroom Equipment. We will refer to them collectively as
    Bobrick.
    4
    Court’s entry of summary judgment in favor of the defendants
    on Santana’s Sherman Act § 1 claim and its tortious
    interference with prospective contract claim.2 However,
    because we conclude that the Lanham Act claim is barred by
    the doctrine of laches, we will reverse the granting of
    summary judgment on that claim.
    I. FACTUAL BACKGROUND
    The following facts are taken primarily from the
    District Court’s very thorough opinion.3
    A. The Toilet Partition Industry
    Santana and Bobrick manufacture toilet partitions.4
    Toilet partitions are made of different materials, including
    metal, stainless steel, plastic laminate, solid phenolic, and
    high density polyethylene (HDPE). The partitions are
    installed in public buildings, such as government offices,
    schools and arenas, as well as in private commercial
    buildings. The competitors in the toilet partition industry
    must engage in competitive bidding for government contracts.
    Before competitors bid for contracts, the architect or
    “specifier” for the project specifies the materials to be used in
    the government project. Only the companies that manufacture
    materials that match those specified may bid on the contract.
    A manufacturer will lobby architects and specifiers to
    2
    Santana does not appeal the § 2 claim, so we do not address
    it.
    3
    The parties’ appeals – Nos. 03-1845, 03-2283, and 03-2481
    – were consolidated. 03-1845.
    4
    Toilet partitions are also referred to as toilet compartments.
    5
    persuade them to specify its product instead of its
    competitors’ products. Once the material for an element of a
    contract has been specified, the companies that manufacture
    the specified material then compete on price.
    Santana makes toilet partitions composed of HDPE.
    As of mid-1989, Santana and four other companies offered
    HDPE partitions. Bobrick makes a partition composed of
    solid phenolic and a partition composed of plastic laminate.
    B. The ASTM E-84 Test and Santana’s HDPE Partition
    The American Standard Test Methods (ASTM) E-84
    test is commonly used in the construction industry to test
    materials for flammability. The two characteristics that the
    ASTM E-84 test analyzes are “flame spread,” which is the
    speed at which a flame spreads across the test material, and
    “smoke developed,” which is the rate at which smoke
    develops once the material starts to burn. The E-84 test
    generates indices that compare the “flame spread” and
    “smoke developed” characteristics of the test material to those
    of red oak and inorganic reinforced cement surfaces under the
    same fire exposure conditions.
    Building codes and the National Fire Protection
    Association’s (NFPA) Life Safety Code 101 use the ASTM
    E-84 test indices to generate fire ratings for materials. A
    Class A fire rating is the best, Class B is second best, and
    Class C is third best. Any material that does not fit into one
    of these ratings is considered unrated. The flame spread value
    for each class differs, but all classes require a “smoke
    developed” value of less than 450. The NFPA Life Safety
    Code 101 requires the material to meet a specific fire rating
    depending on the manner in which the material is used. For
    example, “interior finish” or “wall finish” materials are
    required to have a Class B rating whereas material that is
    6
    considered a “furnishing” or “fixture” can be unrated.5
    In the early 1980's Santana developed the “FR”
    partition and used the ASTM E-84 test to assess the
    partition’s fire rating. Santana advertised the FR partition in
    the Sweet’s Catalogue6 as having a Class A rating. The same
    advertisement claimed that Santana’s HDPE partition had a
    Class B “flame spread.” By the 1990's, Santana was phasing
    out the FR partition in favor of its HDPE partition. The
    HDPE partition, however, even though its “flame spread”
    value fit into the Class B rating, was precluded from being
    rated because of its high “smoke developed” value.
    C. The 1994 TPM C Litigation
    Formica, one of the largest plastic laminate suppliers in
    the United States, along with its customers in the toilet
    compartment industry, all non-parties to this litigation, formed
    the Toilet Partitions Manufacturers Council (TPMC).
    According to Santana, the TPMC was concerned about the
    success Santana was having with sales of its HDPE partitions.
    The TPMC allegedly agreed to tell project specifiers that
    Santana’s HDPE compartments were properly characterized
    as wall finishes but did not meet the NFPA’s fire rating for
    wall finishes because of the high “smoke developed” value.
    Formica and Metpar, also a member of the TPMC, made a
    5
    One issue in the present litigation is whether toilet partitions
    are finishes or furnishings/fixtures.
    6
    The Sweet’s Catalogue is a collection of catalogues of
    manufacturers’ building products. Manufacturers pay to place
    their catalogues in the Sweet’s Catalogue, and architects
    subscribe to and refer to the Sweet’s Catalolgue before
    specifying materials to be used in construction projects. One
    section of the Sweet’s Catalogue is devoted to toilet partitions.
    7
    videotape that, according to Santana, falsely depicted the
    flammability of Santana’s HDPE partitions. The sales
    representatives of companies belonging to the TPMC showed
    the videotapes during sales presentations to architects.
    Bobrick was not a member of the TPMC but did
    discuss with members of the TPMC the fire characteristics of
    HDPE. In July 1989, Bobrick received a copy of a Metpar
    fact sheet comparing HDPE to phenolic and stating that
    HDPE had a “smoke developed” rating exceeding fire
    standards. Alan Gettleman and Bob Gillis, both Bobrick
    employees, went on a plant tour of Formica and watched the
    videotape. Formica gave Bobrick a copy of the videotape in
    early 1990, and Bobrick forwarded the videotape to its
    architectural representatives.
    In November 1994, Santana brought suit against
    Formica, Metpar, ten other toilet partition manufacturers, and
    the TPMC. The defendants in the present case were not
    named as defendants in the 1994 action. The 1994 action
    essentially alleged a conspiracy to use scare tactics to
    discourage the specification of HDPE partitions by falsely
    alleging that HDPE partitions posed a fire hazard. The parties
    to the 1994 action settled it in 1995.
    D. Bobrick’s Marketing Campaign
    Santana contends that Bobrick conducted an unlawful
    marketing campaign to persuade architects and specifiers that
    HDPE partitions did not meet building code requirements and
    posed a fire hazard. In addition to distributing the Formica
    videotape in 1990, Bobrick distributed to its sales
    representatives a “Technical Bulletin” (TB-73) which
    provided a comparison of ASTM E-84 tests performed on
    Bobrick’s partitions and on HDPE partitions. Bobrick
    included the TB-73 Bulletin in its Architectural Manual from
    1990 to at least 1994 and allegedly beyond. In 1992, Bobrick
    8
    produced a videotape entitled “You Be The Judge,” which
    also included comparison tests of solid phenolic partitions and
    HDPE partitions. Some Bobrick representatives conducted
    live demonstrations during which they burned HDPE for
    architects. Bobrick placed an advertisement in the American
    School & University magazine in the early 1990's that
    described HDPE as a fire hazard and as far exceeding fire
    standards of the NFPA Life Safety Code. Bobrick also made
    comparison statements in its advertisements in the Sweet’s
    Catalogue. Finally, Bobrick created slide presentations and
    sales scripts for use by its representatives that portrayed
    HDPE as a fire hazard compared to Bobrick’s partitions.
    II. PROCEDURAL HISTORY
    Santana filed a complaint in the United States District
    Court for the Middle District of Pennsylvania against
    Bobrick, Hornyak, Vogel, Sylvester & Associates, Ltd., and
    Fred Sylvester. 7 Santana asserted claims under §§ 1 and 2 of
    the Sherman Act, 
    15 U.S.C. §§ 1-2
    , the false advertising
    provisions of the Lanham Act, 
    15 U.S.C. § 1125
    (a), and
    Pennsylvania state law for tortious intererence with
    prospective contract. After three years of discovery, the
    parties filed cross-motions for summary judgment.
    7
    Santana’s claims against Sylvester & Associates, Ltd., and
    Fred Sylvester were dismissed for lack of personal jurisdiction.
    Santana subsequently filed an action against them in the District
    Court for the Eastern District of New York. The decision in that
    case is reported at Santana Products, Inc. v. Sylvester & Assoc.,
    Ltd., 
    121 F. Supp. 2d 729
     (E.D.N.Y. 1999).
    Bobrick filed a Third-Party Complaint against Formica
    on June 1, 1998, bringing claims for contribution,
    indemnification, fraud, and negligent misrepresentation, but that
    complaint was dismissed for reasons unimportant to this appeal.
    9
    The defendants argued to the District Court that they
    were immune from liability for all of Santana’s claims by
    reason of the Noerr/Pennington doctrine. The District Court
    agreed, holding that “the Noerr/Pennington doctrine is indeed
    applicable to all of Santana’s claims.” Santana, 
    249 F. Supp. 2d at 470
    . The court stated that “to the extent that Santana
    premises its damages on decisions made by public officials or
    their agents . . . who approved specifications for phenolic
    toilet partitions or disapproved specifications for HDPE toilet
    partition, defendants are immune from liability” 
    Id. at 487
    .
    The court held that any recovery Santana might be entitled to
    would be limited to the effects on the private sector of
    defendants’ marketing campaign. 
    Id. at 470
    .
    The District Court, however, ultimately granted
    summary judgment in favor of all defendants on Santana’s
    Sherman Act § 1 claim. As to Hornyak and Vogel, the court
    held that they could not be liable for a § 1 violation as a
    matter of law because they were “captive sales representatives
    of Bobrick.” 8 Id. As to Bobrick, even though the court found
    the requisite element of concerted action between Bobrick and
    the members of the TPMC, id. at 507-08, the court
    nevertheless held that Bobrick’s marketing campaign was not
    an unreasonable restraint on trade and that, even if it were,
    Santana had only showed a de minimus effect on competition.
    Id. at 470. The court also granted summary judgment on
    Santana’s Sherman Act § 2 claim in favor of defendants. Id.
    8
    The court also found that, because there was no evidence
    that Hornyak and Vogel were marketing to the private sector,
    they were entitled to summary judgment on all claims based on
    their Noerr/Pennington defense. Santana Products, Inc.,, 
    249 F. Supp. 2d at
    494 n. 24.
    10
    at 470, 505-06.9
    Turning to Santana’s false advertising claim under the
    Lanham Act, the District Court rejected Bobrick’s timeliness
    defenses. 
    Id. at 500-01
    . The court concluded that the claim
    was not barred by either the statute of limitations or the
    doctrine of laches but then held that Santana’s recovery under
    the Lanham Act, if at all, would be limited to violations
    occurring within the applicable statute of limitations period,
    which the court held to be the six year “catch-all” limitations
    period under Pennsylvania’s Unfair Trade Practices and
    Consumer Protection Law (UTPCPL). 
    Id. at 500
    . The court
    concluded that summary judgment was not appropriate on the
    Lanham Act claim as to Bobrick because there were fact
    issues as to the literal falsity of statements made in videos,
    advertisements, and other marketing material. 
    Id. at 471
    , 525-
    39.
    Finally, the District Court granted summary judgment
    in favor of the defendants on Santana’s tortious interference
    with prospective contract claim. The court held that the
    Noerr/Pennington doctrine shielded the defendants from
    liability, 
    id. at 542
    , and alternatively found that Santana did
    not “present evidence of the loss of a prospective contract
    with a non-public customer within the one-year limitations
    period.” 
    Id. at 470-71
    .
    III. JURISDICTION AND STANDARD OF REVIEW
    The District Court certified its order for immediate
    9
    The District Court relied on the analysis in Santana
    Products, Inc. v. Sylvester & Assoc., Ltd., 
    121 F. Supp. 2d 729
    (E.D.N.Y. 1999) and held that Santana’s “shared monopoly”
    claim was not a cognizable § 2 claim. Santana Products, 
    249 F. Supp. 2d at 470
    . Santana does not appeal this ruling.
    11
    appeal pursuant to 
    28 U.S.C. § 1292
    (b). 10 We granted
    Santana’s and Bobrick’s petitions for permission to appeal on
    April 17, 2003.
    Bobrick appeals the District Court’s finding that
    Santana’s Lanham Act claim is not barred by the statute of
    limitations or the doctrine of laches, and Santana appeals the
    District Court’s holding that the Noerr/Pennington doctrine is
    applicable to Lanham Act claims. 11 We raised the question of
    our jurisdiction of Bobrick’s appeal pursuant to § 1292(b) and
    asked the parties to provide supplemental briefing on this
    issue even though a different panel of this Court had already
    granted Bobrick’s petition for permission to appeal.12
    We conclude that we have appellate jurisdiction to
    consider Bobrick’s appeal. “[A]ppellate jurisdiction applies
    to the order certified to the court of appeals, and is not tied to
    10
    
    28 U.S.C. § 1292
    (b) gives the courts of appeals
    discretionary jurisdiction over a district court order “[w]hen a
    district judge . . . shall be of the opinion that such order involves
    a controlling question of law as to which there is substantial
    ground for difference of opinion and that an immediate appeal
    from the order may materially advance the ultimate termination
    of the litigation.”
    11
    We have jurisdiction over Santana’s appeal in No. 03-1845
    pursuant to 
    28 U.S.C. § 1291
     because the District Court entered
    a final judgment pursuant to Federal Rule of Civil Procedure
    54(b) on Santana’s Sherman Act claims and its claim for
    tortious interference with prospective contract.
    12
    Even though “other factors [may] counsel in favor of
    deferring to the motions panel,” “[t]he merits panel is certainly
    entitled to reexamine the decision of the motions panel.” In re
    Healthcare Compare Corp. Sec. Litig., 
    75 F.3d 276
    , 279-80 (3d
    Cir. 1996).
    12
    the particular question formulated by the district court.”
    Yamaha Motor Corporation, U.S.A. v. Calhoun, 
    516 U.S. 199
    , 205 (1996). We can “address any issue fairly included
    within the certified order” because the order is appealable, not
    the controlling question of law. Id.; see also Morris v. Hoffa,
    
    361 F.3d 177
    , 197 (3d Cir. 2004).
    The District Court’s order outlined the manner in
    which it was handling each of Santana’s claims, including
    Santana’s Lanham Act claim. The court’s opinion explains
    the reason it chose to certify the order. It stated that “[t]he
    motions present several important and difficult issues for
    which there is not controlling precedent in this Circuit.”
    Santana, 249 F. Supp. at 470. The District Court was
    referring to its decision that the Noerr/Pennington immunity
    defense applied not only to Santana’s Sherman Act and state
    law claims, but also to Santana’s Lanham Act claim. The
    District Court also believed that Bobrick’s timeliness
    challenge to Santana’s claims, “especially its Lanham Act
    cause of action, to which the doctrine of laches applies and
    for which there is no controlling precedent in this
    jurisdiction” was “substantial.” Id.
    The issue of the timeliness of Santana’s Lanham Act
    claim is clearly included in the District Court’s order, and we
    are satisfied that we have appellate jurisdiction to entertain
    Bobrick’s appeal. Moreover, by addressing the laches issue
    now, we avoid deciding a constitutional issue. For the
    reasons we will articulate, it will not be necessary for us to
    consider the Noerr/Pennington doctrine’s applicability to
    Lanham Act claims. See Spicer v. Hilton, 
    618 F.2d 232
    , 239
    (3d Cir. 1980). (“[I]t is well established that courts have a
    duty to avoid passing upon a constitutional question if the
    case may be disposed of on some other ground.”).
    We exercise plenary review over the District Court’s
    decision to grant summary judgment and will use the same
    test applied below. Belitskus v. Pizzingrilli, 
    343 F.3d 632
    -
    13
    639 (3d Cir. 2003). Summary judgment is appropriate where
    “the pleadings, depositions, answers to interrogatories, and
    admissions on file, together with the affidavits, if any, show
    that there is no genuine issue as to any material fact and that
    the moving party is entitled to judgment as a matter of law.”
    Fed. R. Civ. P. 56(c). “Summary judgment is not appropriate,
    however, ‘if a disputed fact exists which might affect the
    outcome of the suit under the controlling substantive law.’”
    Belitskus, 
    343 F.3d at 639
     (quoting Josey v. John R.
    Hollingsworth Corp., 
    996 F.2d 632
    , 637 (3d Cir. 1993)). The
    moving party bears the burden to show an absence of any
    genuine issues of material fact and can meet this burden by
    showing that the non-moving party “has failed to product
    evidence sufficient to establish the existence of an element
    essential to its case.” Alvord-Polk, Inc. v. F. Schumacher &
    Co., 
    37 F.3d 996
    , 1000 (3d Cir. 1994).
    IV. DISCUSSION
    A. Sherman Act § 1 Claim
    Santana contends that the District Court erred when it
    held that the Noerr/Pennington doctrine 13 shielded Bobrick,
    13
    The Noerr/Pennington doctrine protects “the right of the
    people . . . to petition the government for a redress of
    grievances.” U.S. C ONST. amend. I. Defendants in antitrust
    cases are immune from liability when they are exercising their
    First Amendment right to petition.         Actions aimed at
    “influenc[ing] the passage or enforcement of laws” are immune
    from Sherman Act liability even if the antitrust defendant
    intends to restrain trade or to monopolize, so long as the
    “restraint on trade or monopolization is the result of valid
    government action.” Eastern Railroad Presidents Conference
    v. Noerr Motor Freight, Inc., 
    365 U.S. 127
    , 135-36 (1961).
    14
    Hornyak, and Vogel from liability under § 1 of the Sherman
    Act. As to this claim, however, there is no need to decide
    whether Bobrick, Hornyak, and Vogel are entitled to
    immunity under the Noerr/Pennington doctrine. Even if they
    were entitled to immunity, Santana’s § 1 claim fails because
    we conclude that there has been no restraint of trade.
    Section 1 provides that “[e]very contract, combination
    in the form of trust or otherwise, or conspiracy, in restraint of
    trade or commerce among the several States . . . is declared to
    be illegal.” 
    15 U.S.C. § 1
    . An antitrust plaintiff must first
    prove concerted action by the defendants.14 Petruzzi’s IGA
    Noerr/Pennington immunity extends beyond attempts to
    influence the passage and enforcement of laws and applies
    equally to efforts to influence administrative agency action, see
    United Mine Workers of America v. Pennington, 
    381 U.S. 657
    (1965), and efforts to access the court system, see California
    Motor Transport Co. v. Trucking Unlimited, 
    404 U.S. 508
    (1972). The Noerr/Pennington doctrine protects antitrust
    defendants’ rights to “freely inform the government of their
    wishes” and “to seek action on laws in the hope that they may
    bring about an advantage to themselves and a disadvantage to
    their competitors,” Noerr, 
    365 U.S. at 138-39
    .
    Santana argues that the defendants’ marketing campaign
    is not petitioning activity and is therefore not protected by the
    doctrine. Santana argues that, even if the marketing campaign
    is considered petitioning activity, the defendants are not entitled
    to Noerr/Pennington immunity because of the alleged fraudulent
    nature of the defendants’ campaign. Finally, Santana argues that
    Noerr/Pennington immunity does not extend to situations where,
    as here, the government is the purchaser of the products at issue.
    14
    The District Court held that Santana proved the concerted
    action element as to Bobrick, and Bobrick does not challenge
    15
    Supermarkets, Inc. v. Darling-Delaware Co., Inc., 
    998 F.2d 1224
    , 1229 (3d Cir. 1993). A plaintiff must next prove that
    there is a restraint on trade and that the restraint is
    unreasonable. Northern Pacific Railway Co. v. United States,
    
    356 U.S. 1
    , 5 (1958).
    Santana argues that the defendants created a restraint
    on trade by engaging in a group boycott. Santana’s theory is
    as follows: Bobrick and the other members of the TPMC
    conspired to agree upon and enforce against business rivals a
    single product standard that excluded HDPE technology.”
    Because of a TPMC agreement to stop supplying HDPE
    partitions, three TPMC members left the HDPE market,
    leaving only two HDPE suppliers. This agreement was an
    unreasonable restraint of trade because it restricted the output
    of HDPE partitions. The defendants’ concerted action
    reduced the number of HDPE compartment specifications that
    Santana could bid for. In addition, the conspiracy’s emphasis
    this finding. Santana, however, does appeal the District Court’s
    conclusion that it did not prove concerted action as to Hornyak
    and Vogel. Santana seeks to hold Hornyak and Vogel liable
    under § 1 based on their relationship and interaction with
    Bobrick. Hornyak and Vogel argued to the District Court that
    they were incapable of conspiring with Bobrick as a matter of
    law because they sold Bobrick’s products exclusively. The
    court, relying on the Supreme Court’s decision in Copperweld
    Corp. v. Independence Tube Corp., 
    467 U.S. 752
     (1984), and
    our decision in Siegel Transfer, Inc. v. Carrier Express, Inc., 
    54 F.3d 1125
     (3d Cir. 1995), held that, as a matter of law, Hornyak
    and Vogel were incapable of conspiring. 
    249 F. Supp. 2d at 505-06
    .
    As with the Noerr/Pennington issue, we do not need to
    resolve this question because, even if we were to hold Santana
    did prove concerted action as to Hornyak and Vogel, Santana’s
    § claim would still fail.
    16
    on the failure of HDPE compartments to comply with the
    NFPA/ASTM standards had a tendency to “persuade” or
    “coerce” specifiers because such private codes are published
    and are used by various segments of the construction industry.
    The conspiracy resulted in excluding HDPE compartments
    from the market and depriving consumers of a superior
    product.
    We fail, however, to find “restraint” in this alleged
    activity – and without a “restraint,” there is “no restraint of
    trade.” Schachar v. American Academy of Ophthalmology,
    Inc., 
    870 F.2d 397
     (7 th Cir. 1989). Here, Santana’s antitrust
    claim is built on allegations that the defendants criticized the
    safety of HDPE partitions. It is undisputed that the
    defendants informed potential customers that Santana’s
    product presented safety hazards. Santana has not, however,
    demonstrated that Bobrick imposed any restraints on trade.
    Santana does not allege that Bobrick engaged in coercive
    measures that prevented Santana from selling its products to
    any willing buyer or prevented others from dealing with
    Santana. Moreover, Santana’s allegations of fraud in the
    manner in which the hazards of HDPE were portrayed are
    irrelevant because “deception, reprehensible as it is, can be of
    no consequence so far as the Sherman Act is concerned.”
    Noerr, 
    365 U.S. at 145
    ; cf. Schachar, 
    870 F.2d at 399
    (“antitrust law does not compel your competitor to praise your
    product or sponsor your work.”).
    The court’s description in Stearns Airport Equipment
    Co. v. FMC Corp., 
    170 F.3d 518
     (5 th Cir. 1999), of this type
    of product promotion is instructive:
    All of these arguments made by FM C to its
    potential customers may have been wrong,
    misleading, or debatable. But they are all
    arguments on the merits, indicative of
    competition on the merits. To the extent they
    were successful, they were successful because
    17
    the consumer was convinced by either FM C’s
    product or FMC’s salesmanship. FMC –
    unsurprisingly – wanted to be picked over
    Stearns on a contract . . . Without a showing of
    some other factor, we can assume that a
    consumer will make his decision only on the
    merits. To the extent a competitor loses out in
    such a debate, the natural remedy would seem to
    be an increase in the losing party’s sales efforts
    on future potential bids, not an antitrust suit.
    
    170 F.3d at
    524-25
    Here, the defendants’ marketing campaign was aimed
    primarily at persuading government architects to specify
    Bobrick’s materials instead of materials made from HDPE. It
    was the architects who would make the ultimate decision of
    which product to specify for use in a particular project. This
    is classic competition on the merits of a product. In no real
    sense is Santana excluded from the toilet partition market.
    Santana remains free to tout its product to the specifiers and
    remains equally free to reassure them that its partitions are
    superior to Bobrick’s partitions and to prove Bobrick wrong
    with respect to the flammability of HDPE partitions. Toilet
    partition buyers are in no way constrained from buying HDPE
    toilet partitions. “The central insight . . . is that jockeying
    over specifications . . . is a valid form of competition . . ..
    This behavior was ‘simple salesmanship’ that enhanced rather
    than subverted competition on the merits. If . . . [Santana]
    was ‘excluded,’ it was excluded by . . . [Bobrick’s] superior
    product or business acumen.” Stearns, 
    170 F.3d at 526
    .
    In Stearns, under very similar facts, the court rejected
    the plaintiff’s claim that the defendant’s “attempts to
    convince independent government purchasers to adopt
    specifications in their favor prior to bidding are a violation of
    the antitrust laws.” 
    170 F.3d at 522
    . The court reasoned that
    18
    “the alleged exclusionary conduct required the active approval
    of the consumer.” 
    Id. at 525
    . Unlike cases where the alleged
    exclusionary conduct leaves the consumer with no input
    whatever, the decision to specify “was always ultimately in
    the hands of the consumer.” 
    Id.
     There was no evidence that
    the defendant prevented the plaintiff from “pushing its
    arguments at the specifications phase.” 
    Id. at 526
    .
    Accordingly, the plaintiff was not excluded from competition.
    In an earlier Fifth Circuit case, Consolidated Metal
    Products, Inc. v. American Petroleum Institute, 
    846 F.2d 284
    ,
    286 (5 th Cir. 1988), the court came to the same conclusion
    under a different set of facts. Plaintiff sued the American
    Petroleum Institute (API), alleging the API excluded it from
    the market by delaying trade standard certification to its
    equipment. API was a standard-setting body that granted the
    manufacturer a license to display its monogram on the
    manufacturer’s equipment if the API found that the equipment
    satisfied its standards. The plaintiff applied for, and was
    denied, a license to use APE’s monogram. The court held
    that “a trade association that evaluates products and issues
    opinions, without constraining others to follow its
    recommendations,” does not violate the Sherman Act by
    unfavorably evaluating a manufacturer’s product. 
    Id. at 292
    .
    The court noted that API approval was not required by law,
    equipment was sold frequently without it, and consumers
    were in no way constrained from buying the plaintiff’s
    products. The plaintiff was not excluded “in a real sense”
    from the market because it was still free to sell its products
    and consumers were free to buy them. 
    Id. at 292
    . The court
    stressed that manufacturers of equipment still had the ability,
    even without an API monogram, to market the quality of their
    products. 
    Id. at 296
    .
    The Seventh Circuit Court of Appeals in Schachar
    similarly found no restraint of trade. The plaintiffs were
    ophthalmologists who performed a surgical procedure labeled
    19
    “experimental” by the National Advisory Eye Council. 
    870 F.2d at 397
    . The American Academy of Ophthalmology
    endorsed the Council’s position and issued a press release
    advising physicians and patients not to use the procedure until
    more research had been completed. The plaintiffs alleged that
    the press release was part of a conspiracy to restrain trade.
    The court held that there was no violation of the Sherman Act
    because there was no enforcement device that operated to
    restrain trade. None of the plaintiffs was prevented from
    doing the procedure and none was sanctioned for performing
    it. The court characterized the challenged action as “warfare
    among suppliers and their different products,” not as restraint,
    but as competition. 
    Id. at 399
    . The court cited Consolidated
    Metal Products with approval:
    If such statements should be false or misleading
    or incomplete or just plain mistaken, the remedy
    is not antitrust litigation, but more speech – the
    marketplace of ideas.
    
    Id. at 400
    .
    Santana, on the other hand, relies on Allied Tube &
    Conduit Corp. v. Indian Head, Inc., 
    486 U.S. 492
     (1998), to
    argue that the defendants “acted like a private standard-setting
    organization in adopting an anti-HDPE campaign, using false
    advertising videotapes to cause all types of customers . . . to
    refrain from purchasing HDPE compartments and to ensure
    that HDPE compartments were excluded from purchase
    specifications.” Contrary to Santana’s assertions, however,
    the TPM C is not a standard-setting body. It does not set,
    adopt, or enforce any industry standards for safety or other
    product characteristics. The NFPA is the relevant standard-
    setting organization, but Santana has not alleged that Bobrick
    and the TPMC members had any contact with the NFPA.
    Bobrick, Hornyak, Vogel, and the members of the TPMC
    20
    interpreted NFPA standards to their advantage. Santana has
    the right to do the same. What is lacking in these facts is
    some enforcement device that operates to restrain trade. The
    District Court properly distinguished Allied Tube:
    Allied Tube . . . involved the manipulation of the
    process of establishing an influential body’s
    standards to exclude rival technology from the
    market . . .. [T]his case does not involve efforts
    to influence standard-setting or enforcement by
    a body with a cachet of influence. A campaign
    of persuasion of architects and specifiers that
    toilet partitions are subject to fire and smoke
    development standards for interior wall finishes
    does not constitute standard setting or
    enforcement . . ..
    Santana Products, 
    249 F. Supp. 2d at 509-10
    .
    Unlike Allied Tube, Bobrick’s activity did not take
    place ‘within the confines of a private standard-setting
    process.” 486 U.S. at 506. Bobrick “confine[d] itself to
    efforts to persuade an independent decisionmaker” and did
    not “organize[] . . . [or] orchestrate[] the actual exercise of . . .
    decisionmaking authority in setting a standard.” Id. at 507.
    The government officials making the decision to specify
    materials were disinterested, conducted their own fire safety
    tests before making decisions, and were susceptible to
    lobbying from all competitors in the toilet partition industry.
    For the above reasons, we conclude that there was no
    restraint of trade.
    B. Lanham Act § 43(a) Claim
    The defendants also claimed that they could not be
    21
    held liable for a violation of the false advertising provision of
    § 43(a) of the Lanham Act because of Noerr/Pennington
    immunity. The District court, after careful consideration,
    concluded that the Noerr/Pennington doctrine shields the
    defendants from liability under the Lanham Act. Santana,
    
    249 F. Supp. 2d at 493
    . Santana appeals the District Court’s
    holding, arguing that the court should not have extended the
    applicability of the Noerr/Pennington doctrine to false
    advertising claims brought under the Lanham Act. We will
    not address at this time the Noerr/Pennington doctrine’s
    applicability to Lanham Act claims because we conclude that
    Santana’s Lanham Act claim is barred by laches.
    Santana brought this action on October 1, 1996. The
    Lanham Act does not contain a statute of limitations. Instead,
    the Act subjects all claims to “the principles of equity.” 15
    U.S.C.§1117(a). Bobrick challenged the timeliness of
    Santana’s Lanham Act claim, asserting that Santana was
    complaining of conduct that occurred seven years before it
    filed the action and that Santana had settled its 1994 lawsuit
    against the TPMC and Bobrick was not a party to that
    litigation. Bobrick raised two timeliness defenses to
    Santana’s Lanham Act claim – statute of limitations and
    laches.
    It was proper for the District Court to use the most
    analogous statute of limitation as a guideline for determining
    whether the laches doctrine bars Santana’s claim instead of
    focusing solely on whether Santana brought its claims within
    the applicable statute of limitations period. Courts commonly
    use the appropriate statute of limitations as a guideline in
    claims for false advertising under §43(a) of the Lanham Act.
    See Conopco, Inc. v. Campbell Soup Co., 
    95 F.3d 187
     (2d
    Cir.1996); Hot Wax, Inc. v. Turtle Wax, Inc., 
    191 F. 3d 813
    (7 th Cir. 1999); Jarrow Formulas, Inc. v. Nutrition Now, Inc.,
    
    304 F. 3d 829
     (9 th Cir. 2002). We also used the statute of
    limitations as a guideline. See, e.g., University of Pittsburgh
    22
    v. Champion Products, Inc., 
    686 F.2d 1040
     (3d Cir. 1982)
    (discussing relationship between statute of limitations and
    inexcusable delay element of laches in claim for false
    designation of origin of goods under § 43(a) of the Lanham
    Act).
    Because the Lanham Act does not specify a statute of
    limitation, courts must
    “adopt a local time limitation as federal law if it is not
    inconsistent with federal law or policy to do so.” Wilson v.
    Garcia, 
    471 U.S. 261
    , 266-67 (1985). To do this, a court
    “must characterize the essence of the claim in the pending
    case, and decide which statute provides the most appropriate
    limiting principle.” 
    Id. at 268
    ; See also Malley-Duff & Assocs,
    Inc. v. Crown Life Ins., 
    792 F.2d 341
     (1986). The court must
    decide which state claim is the “most appropriate” or “most
    analogous” to all claims that may be brought under § 43(a) of
    the Lanham Act. Wilson, 
    471 U.S. at 268
    . Courts must
    “choose the best out of the available candidates.” Malley-
    Duff, 
    792 F.2d at 349
    . Bobrick urges us to conclude that the
    best choice is Pennsylvania’s action for fraud, which has a
    two-year statute of limitation. Santana maintains, and the
    District Court determined that the UTPCPL, which has a six-
    year “catch-all” statute of limitation, is the best choice. We
    agree with the District Court.
    To assert a claim for false advertising under § 43(a) of
    the Lanham Act, the plaintiff must prove that the defendant
    use[d] in commerce any word, term, name, symbol, or
    device, or any
    combination thereof, or any false designation of origin,
    false or misleading description of fact, or false or
    misleading representation of fact, which . . .
    in commercial advertising or promotion, misrepresents
    the nature,
    characteristics, qualities, or geographic origin of his or
    her or another
    23
    person’s goods, services, or commercial activities . . .
    15 U.S.C. 1125(a). The plaintiff must prove that the
    commercial message is either literally false or, if not literally
    false, literally true or ambiguous with the tendency to deceive
    consumers. Novartis Consumer Health, Inc. v. Johnson &
    Johnson-Merck Consumer Pharm. Co., 
    290 F.3d 578
    , 586 (3d
    Cir. 2002). If the plaintiff proves literal falsity, there is no
    need to show that the buying public was misled. Johnson &
    Johnson-Merck Consumer v. Rhone-Poulenc Rorer Pharm.,
    Inc., 19 F3d 125, 129-30 (3d Cir. 1994). Otherwise, the
    plaintiff must prove “that there is actual deception or at least a
    tendency to deceive a substantial portion of the intended
    audience.” Id. at 129.
    To prove fraud in Pennsylvania, a plaintiff must prove
    six elements: 1) a misrepresentation, 2) material to the
    transaction, 3) made falsely, 4) with the intent of misleading
    another to rely on it, 5) justifiable reliance resulted, and 6)
    injury was proximately caused by the reliance. Viguers v.
    Philip Morris USA, Inc., 
    837 A.2d 534
     (Pa. Super. Ct. 2003).
    On the other hand, to prove “unfair methods of
    competition” and “unfair or deceptive acts or practices” under
    the UTPCPL , a plaintiff must demonstrate
    (i) Passing off goods or services as those of another;
    (ii) Causing likeliness of confusion or of
    misunderstanding as to the source, sponsorship,
    approval, or certification of goods or services;
    ...
    (iv) Using deceptive representations or designations of
    geographic origin in connection with the goods or
    services;
    (viii) Disparaging the goods, services or business of
    another by false or
    misleading representation of fact;
    (ix) Advertising goods or services with intent not to
    sell them as advertised;
    24
    ...
    (xi) Making false or misleading statements of fact
    concerning the reasons for,
    existence of, or amounts of price reductions;
    ...
    (xxi) Engaging in any other fraudulent or deceptive
    conduct which creates a
    likelihood of confusion or of misunderstanding.
    73 P.S. § 201-2(4) (emphasis added). The Supreme Court of
    Pennsylvania has held that a plaintiff bringing an action
    under the UTPCPL must prove the common law fraud
    elements of reliance and causation with respect to all
    subsections of the UTPCPL.
    Weinberg v. Sun Co., Inc., 
    777 A. 2d 442
    , 446 (Pa. 2001).
    This Court in Island Insteel, Inc. v. Waters decided
    that, even though a Virgin Islands action for fraud was
    analogous to a trademark infringement claim brought under §
    43(a) of the Lanham Act15 , the most analogous action in the
    Virgin Islands was one for
    15
    To establish a trademark infringement claim under § 43(a),
    the plaintiff must prove that the defendant:
    use[d] in commerce any word, term, name, symbol, or
    device, or any
    combination thereof, or any false designation of origin,
    false or misleading
    description of fact, or false or misleading representation
    of fact, which . . .
    is likely to cause confusion, or to cause mistake, or to
    deceive as to the
    affiliation, connection, or association of such person with
    another person, or as to
    the origin, sponsorship, or approval of his or her goods,
    services, or commercial activities by another person . . .
    
    15 U.S.C. § 43
    (a) (emphasis added).
    25
    deceptive trade practices. 
    296 F.3d 200
    , 204 (3d Cir. 2002).
    We noted that an
    action for fraud requires proof of scienter, whereas an action
    for deceptive trade practices and an action for trade
    infringement do not. 
    Id.
     We also noted that “a common law
    fraud claim requires a plaintiff to prove actual reliance,”
    whereas “an action for deceptive trade practices simply
    requires proof that the practice at issue has the ‘tendency or
    effect of deceiving or misleading consumers,’ which more
    closely resembles the ‘likelihood of confusion’ element that
    is the touchstone of a § 43(a) claim.” Id.
    An action for fraud always requires the plaintiff to
    prove scienter, whereas the Lanham Act does not. The
    UTPCPL is in the middle. It encompasses causes of action in
    which the plaintiff must prove intent and causes of action in
    which the plaintiff need not prove intent. Furthermore, a
    false advertising claim under Lanham Act is different both
    from an action brought under the UTPCPL and from a fraud
    action in Pennsylvania
    because it does not always require the plaintiff to prove that
    consumers have been misled. Analogies to state statutes or
    common law “are bound to be imperfect.” Wilson, 
    471 U.S. at 272
    . As the District Court noted, the Lanham Act and the
    UTPCPL “‘ supplement[] rather than supplant[] traditional
    common law remedies with per se liability for a variety of
    unfair trade practices.”’ Santana, 
    249 F. Supp. 2d at 499
    (quoting Gabriel v. O’Hara, 
    534 A.2d 488
    , 491 (Pa. Super.
    Ct. 1987)). Section 43(a) has multiple claims, as does the
    UTPCPL, while an action for fraud is narrower. The
    UTPCPL is the most analogous state cause of action that
    would encompass all claims brought under § 43(a) of the
    Lanham Act. See Malley-Duff, 
    792 F.2d at 347
     (noting the
    need to “look[] to the federally created cause of action for a
    broader analogy that could encompass all claims brought
    thereunder in a given statute”).
    26
    Bobrick cites our opinion in Beauty Time, Inc. v. VU
    Sys., Inc. 
    118 F.3d 140
     (3d Cir. 1997), and argues that we have already held that
    Pennsylvania’s fraud cause
    of action was most analogous to claims under the Lanham
    Act. However, Beauty Time involved a claim for fraudulent
    procurement of a trademark registration in violation of § 38
    of the Lanham Act. Its holding is not, therefore, controlling
    because this case involves an action under § 43 (a). See
    Island Insteel, 
    296 F.3d at 208
    .
    Bobrick also argues that the District Court erred by
    picking the UTPCPL six-year “catch-all” statute of
    limitations because in Island Insteel we rejected the
    plaintiff’s argument there that a similar catch-all limitations
    period applied to a Lanham Act trademark infringement
    action. In Island Insteel, however, the plaintiffs did not
    “identify a specific statutory cause of action under Virgin
    Islands law that is analogous to their
    Lanham Act claim and is subject to the catch-all six year
    limitations period for actions upon a liability created by a
    statute that lacks a statute of limitations.” 
    Id. at 204
     (emphasis
    added). In Island Insteel, we explained that the catch-all
    statute of
    limitations could have applied if the plaintiff had identified
    an analogous cause of action
    governed by that period. 
    Id. at 209
    . Here, on the other hand,
    the most analogous cause of action – an action under the
    UTPCPL – is governed by the six-year “catch-all” limitations
    period. See Gabriel v. O’Hara, 
    534 A.2d 488
    , 495-96 (Pa.
    Super. Ct 1987); Algrant v. Evergreen Valley Nurseries, Ltd.,
    
    941 F. Supp. 495
    , 499 (E.D. Pa 1996).
    Regardless, however, of which statute of limitations is
    applicable, Bobrick argues that the doctrine of laches
    operates to bar Santana’s Lanham Act claim. The District
    Court used the six-year statute of limitations as a guide for
    27
    determining whether the doctrine of laches applied here.
    Noting that Santana was aware of Bobrick’s allegedly
    wrongful conduct in 1989, more than seven years before
    Santana brought the action, the
    court held that there was a presumption of laches. Santana,
    
    249 F. Supp. 2d at 501
    . The court first held that Santana’s
    proffered excuse – that “it repeatedly provided
    notice to Bobrick that Santana considered the alleged ‘fire
    scare’ tactics to be wrongful” – could not justify the delay in
    bringing the action. 
    Id.
     The court nevertheless held that
    laches did not bar Santana from bringing its claim because
    Santana proved that Bobrick did not suffer material prejudice
    as a result of the delay. 
    Id.
    Laches consists of two elements: (1) inexcusable
    delay in bringing suit, and (2) prejudice to the defendant as a
    result of the delay. Pittsburgh, 
    686 F.2d at 1044
    . Bobrick
    contends that the District Court erred because it did not
    require Santana to disprove both elements of laches. Santana
    responds that the District Court did not err because Santana
    had to disprove only one element, and it successfully did so
    by proving that Bobrick did not suffer prejudice as a result of
    the delay.16
    16
    The District Court made a finding that Santana was aware
    of Bobrick’s allegedly wrongful conduct in 1989. Santana, 
    249 F.Supp. 2d at 501
    . Santana argues that there are fact issues as
    to when Santana knew or should have known about Bobrick’s
    marketing activities to fix the beginning of the delay period
    prior to suit. Santana points out that the TPMC was not formed
    until late 1989 and that Bobrick received a copy of the Formica
    videotape in early 1990.       Santana argues that it did not
    distribute the Formica videotape to its sales representatives until
    1990, it did not produce the “You Be The Judge” videotape until
    1992, and it placed other advertisements throughout the 1990's.
    The length of the delay is a question of fact which is
    28
    We conclude that the District Court erred because it
    did not use the appropriate legal standard to assess Bobrick’s
    laches defense. Once the statute of limitations has expired,
    the defendant “enjoys the benefit of a presumption of
    inexcusable delay and prejudice. EEOC v. The Great Atlantic
    & Pacific Tea Co., 
    735 F.2d 69
    , 80 (3d Cir. 1984). The
    District Court correctly found that there was a presumption of
    laches as a result of Santana filing the claim after the
    applicable statute of limitations – 6 years under the UTPCPL
    – had run. Santana, therefore, carried the burden of proving
    that its delay was excusable and that it did not prejudice
    Bobrick. Gruca v.United States Steel Corp., 
    495 F.2d 1252
    ,
    1258-59 (3d Cir. 1974) (noting that the length of the delay
    reviewed under the clearly erroneous standard. Churma
    v.United States Steel Corp., 
    514 F.2d 589
    , 593 (3d Cir. 1975).
    The District Court’s finding as to when Santana was aware of
    Bobrick’s conduct is not clearly erroneous. As early as March,
    1989, Santana was aware of Bobrick’s “fire scare” campaign.
    On March 5, 1989, Lynch of Santana approached Bob Gillis at
    the American Association of School Administrators Convention,
    identified himself as the president of Santana, and informed
    Gillis that he objected “to what he considered an unfair attack
    on the physical properties of the polyethylene material used in
    the manufacture of Bobrick’s toilet compartments.” Lynch
    asked Gillis for the names of Bobrick’s attorneys so that
    Santana’s attorneys could contact them. Patrick McGartland,
    Santana’s regional sales manager, stated in his deposition that in
    “either 1988 or 1989 . . . [he] was aware of that there was an
    effort to create this impression on the part of the potential buyer
    in the marketplace or the specifier that solid plastic was a fire
    issue.”
    29
    controls burdens of proof). 17
    Santana argues, however, that, despite the running of
    the statute of limitations, a presumption of laches can be
    rebutted by showing only an absence of prejudice. Santana
    cites Anaconda Co. v. Metric Tool & Die Co., in which the
    District Court, while recognizing that a defendant is entitled
    to a rebuttable presumption of both elements of laches, held
    that the plaintiff can rebut the presumption by negating “one
    or both” of the elements. 
    485 F.Supp. 410
    , 427-28 (E.D. Pa
    1980) (Becker, J.). The court reasoned:
    [R]equiring the plaintiff to carry
    this double burden would be
    inconsistent with the conceptual
    structure of the laches doctrine,
    which requires the court to find
    both inexcusable delay on the part
    of the plaintiff and prejudice to
    the defendant. If a plaintiff
    rebuts the presumption as to either
    of the two elements, the court
    cannot find that both elements
    exist, and therefore cannot uphold
    the defense of laches.
    
    Id.
     at 428 n.14.
    Nevertheless, despite the reasoning of the District
    17
    This added presumption that both inexcusable delay and
    prejudice exist is enjoyed by a defendant once the statute of
    limitations has run. See EEOC v. The Great Atlantic & Pacific
    Tea Co., 
    735 F.2d at 80
    . It is because of this presumption that
    we do not agree with the position of the dissent that Santana had
    only to demonstrate that prejudice to Bobrick did not exist.
    Once the statute of limitations has run, the defendant’s burden
    doubles.
    30
    Court in Anaconda, we have consistently held that a plaintiff
    must prove that laches does not exist by showing that its delay
    was excusable and that its delay did not prejudice the
    defendant. See Great Atlantic & Pacific Tea Co., 
    735 F.2d at 80
     (“If a statutory limitations period that would bar legal
    relief has expired . . . the burden shifts to the plaintiff to
    justify its delay and negate prejudice.”); Churma v. United
    States Steel Corp., 
    514 F.2d 589
    , 593 (3d Cir. 1975) (“Prior to
    the running of the statute, the defendant has to prove laches,
    but thereafter the plaintiff has to disprove laches.”); Gruca v.
    United States Steel Corp.., 
    495 F.2d 1252
    , 1259 (3d Cir.
    1974) (“If a plaintiff sleeps on his rights for a period of time
    greater than the applicable statute of limitations, then ‘the
    plaintiff (must) . . . come forward and prove that his delay
    was excusable and that it did not . . . prejudice the
    defendant.’”) (citation omitted); Burke v. Gateway Clipper,
    Inc., 
    441 F.2d 946
    , 949-50 (3d Cir. 1971) (“We are aware that
    other circuits place the burden of proving inexcusable delay
    and prejudice on the defendant. We see no new and
    compelling reason to reverse the well-established principle
    and thoroughly considered line of decisions of this Circuit
    requiring the plaintiff to disprove inexcusable delay and lack
    of prejudice to the defendant when, as here, . . . [the statute of
    limitations period has run].”); Mroz v. Dravo Corp., 
    429 F.2d 1156
    , 1160 (3d Cir. 1970) (never addressing whether plaintiff
    rebutted presumption of prejudice because plaintiff did not
    rebut presumption of inexcusable delay); Lipfird v.
    Mississippi Valley Barge Line, 
    310 F.2d 639
    , 642 (3d Cir.
    1962) (holding that delay beyond the applicable statute of
    limitations period bars plaintiff’s claim “unless he overcomes
    the presumption of inexcusable delay and detriment to the
    defendant resulting from the delay by pleading and proving
    facts which do excuse the delay and show that it has been in
    no way detrimental to the defendant”); Kane v. Union of
    Soviet Socialist Republics, 
    189 F.2d 303
    , 307 (3d Cir. 1951)
    31
    (affirming district court’s dismissal of plaintiff’s claim based
    on laches because it did not “plead[] facts negativing
    prejudice and excusing his delay.”).
    In all of our cases addressing this issue, we have held
    that the plaintiff’s burden to rebut the presumption of laches
    is conjunctive. Not once have we used the word “or.” The
    District Court concluded that Santana’s delay in filing its
    Lanham Act claim was inexcusable. The proper conclusion
    then is that Santana’s Lanham Act claim is barred by laches.
    C. Tortious Interference With Prospective
    Contract Claim
    Even though we have held that the Noerr/Pennington
    doctrine shields petitioning activity from liability for claims
    of tortious interference with contract and tortious interference
    with prospective economic advantage, see Cheminor Drugs,
    Ltd. v. Ethyl Corp., 
    168 F.3d 119
    , 128 (3d Cir. 1999), we do
    not need to decide whether the marketing campaign at issue
    here is petitioning activity which the doctrine immunizes.
    For even if the defendants are not shielded from liability, we
    agree with the District Court that Santana did not prove the
    existence of a prospective contractual relation.18
    There is only one prospective contract with which
    Santana claims Bobrick interfered. Specifically, Santana
    tried to bid on a contract at the Rio Hondo Community
    College in California. The architect for the project originally
    specified HDPE toilet partitions. However, the architect
    changed the specification to phenolic after watching a
    18
    Aside from proving the existence of a prospective
    contractual relation, a plaintiff must prove the defendant had the
    purpose or intent to harm the plaintiff by preventing the relation
    from occurring, the absence of privilege or justification on the
    part of the defendant, and actual damage resulting from the
    defendant’s conduct. Thompson Coal Co. v. Pike Coal Co., 
    412 A.2d 466
    , 471 (Pa 1979).
    32
    videotape and conducting a fire test on samples of HDPE,
    which Santana had provided, and samples of phenolic, which
    Bobrick had provided. Penner Partitions, a supplier of
    phenolic partitions, ultimately won the contract. Santana
    argues that it lost this contract as a result of Bobrick’s “fire
    scare” tactics.
    A prospective contractual relation “is something less
    than a contractual right, something more than a mere hope.”
    Thompson Coal Co. v. Pike Coal Co., 
    412 A.2d 466
    , 471 (Pa
    1979). To determine whether Santana had a prospective
    contractual relation with Rio Hondo, “Santana must show that
    an issue of fact exists as to whether, but for Bobrick’s ‘fire
    scare’ campaign, there was a reasonable probability that
    Santana would secure a contract from Rio Hondo.” Santana,
    
    249 F.Supp.2d at 543
    . It need not be certain that Santana
    would have obtained the contract, only reasonably probable.
    Alvord-Polk, 37 F.2d at 1015.
    Santana argues it was reasonably probable that it
    would have obtained the contract but for the defendant’s
    marketing campaign because it had approximately 60% of the
    HDPE market segment, had a favorable track record with the
    customer, and had actually been specified.
    Despite the specification of HDPE for the Rio Hondo
    project, we cannot say, however, that it was reasonably
    probable that Rio Hondo was going to award the contract to
    Santana. Even though Santana had convinced Rio Hondo to
    specify its partitions, Santana did not have a “reasonable
    probability of obtaining the contract” for the work. General
    Sound Telephone Co. v. AT&T Communications, Inc., 
    654 F.Supp. 1562
    , 1565 (E.D. Pa 1987). Because Bobrick
    persuaded Rio Hondo to change the specification to phenolic
    instead of HDPE, Santana was simply denied an opportunity
    to bid. However, even if Santana had had the opportunity to
    bid, one of the two other suppliers of HDPE partitions –
    33
    Capital Partitions or Comtec19 – could still have obtained the
    contract. There is no evidence that Santana would be the
    winning bidder. The problems with obtaining a government
    contract in this situation is demonstrated by the fact that Rio
    Hondo did not in fact award the contract to Bobrick .
    V. Conclusion.
    For the foregoing reasons, we will affirm the District
    Court’s grant of summary judgment in favor of the defendants
    on Santana’s § 1 Sherman Act claim and tortious interference
    with prospective contract claim. Because we conclude,
    however, that the Lanham Act claim is barred by the doctrine
    of laches, we will vacate the order granting Noerr/Pennington
    immunity to defendants insofar as the § 43(a) claim applied to
    government contracts and we will vacate the order denying
    summary judgment to defendants insofar as the § 43(a) claim
    applied to private contracts. We will remand the Lanham Act
    claim to the District Court to dismiss it as barred by laches.
    19
    Comtec, which had supplied HDPE partitions to the three
    companies that had stopped selling the HDPE partitions, entered
    the toilet partition market to sell HDPE partitions in their place.
    34
    Chertoff, Circuit Judge, dissenting in part.
    I join the majority insofar as it affirms summary
    judgment on Santana’s claims under Section One of the
    Sherman Act. I do not agree, however, that laches bars
    Santana’s Lanham Act claim. Specifically, I do not believe
    that either logic or this Court’s jurisprudence requires a
    plaintiff who bears the burden of showing that laches does not
    apply to show that both conditions necessary for the
    application of laches do not exist. And since the District
    Court determined that Bobrick had not suffered
    prejudice—and the Court’s determination was not an abuse of
    discretion—the doctrine of laches should not bar Santana’s
    claim.
    “The doctrine of laches consists of two essential
    elements: (1) inexcusable delay in instituting suit; and (2)
    prejudice resulting to the defendant from such delay.” Central
    Pennsylvania Teamsters Pension Fund v. McCormick Dray
    Line, Inc., 
    85 F.3d 1098
    , 1108 (3d Cir. 1996). If a plaintiff
    filed suit before the analogous state statute of limitations had
    run, the defendant bears the burden of showing that plaintiff’s
    delay in instituting suit was inexcusable and the defendant
    suffered prejudice from the inexcusable delay. Conversely, if
    a plaintiff filed suit after the analogous state statute of
    limitations had run, a presumption arises that plaintiff’s delay
    in instituting suit was inexcusable and defendant suffered
    prejudice from the delay. The plaintiff then bears the burden
    of rebutting this presumption. See, e.g., Equal Employment
    Opportunity Commission v. Great Atlantic & Pacific Tea Co.,
    
    735 F.2d 69
    , 80-81 (3d Cir. 1984).
    The majority today holds that a plaintiff who bears the
    burden of rebutting such a presumption must show that his
    delay in instituting suit was not inexcusable and that the
    35
    defendant did not suffer prejudice from the delay. The
    majority concludes that our precedent compels this
    conclusion.
    To be sure, language in our prior decisions tends to
    support the majority’s holding. As cited by the majority, we
    wrote in Burke v. Gateway Clipper, 
    441 F.3d 946
    , 949 (3d
    Cir. 1971), in language we quoted in Churma v. United States
    Steel Corp., 
    514 F.2d 589
    , 593 (3d Cir. 1975) and Gruca v.
    United States Steel Corp., 
    495 F.2d 1252
    , 1259 (3d Cir.
    1974), that a plaintiff who bears the burden of proof must
    “come forward and prove that his delay was excusable and
    that it did not unduly prejudice the defendant.” Likewise, in
    Lipfird v. Mississippi Valley Barge Line Co., 
    310 F.2d 639
    ,
    642 (3d Cir. 1962), and Kane v. Union of Soviet Socialist
    Republics, 
    189 F.2d 303
    , 307 (3d Cir. 1951), we affirmed
    dismissals where the plaintiff failed to allege “any facts
    excusing his delay and showing lack of prejudice to the
    defendant.”
    We are “bound by holdings,” however, “not language.”
    Alexander v. Sandoval, 
    532 U.S. 275
    , 282 (2001). On this
    point, I agree with the District Court’s conclusion in Baczor v.
    Atlantic Richfield Co., 
    424 F. Supp. 1370
     (E.D. Pa. 1976),
    that the references to rebutting both prongs of the test are
    dicta in these cases, rather than holdings which bind the
    Court. 
    Id.
     at 1380 n.5; see also Anaconda Co. v. Metric Tool
    & Die Co., 
    485 F. Supp. 410
    , 428 n.14 (E.D. Pa. 1980)
    (agreeing with Baczor). In each case -- Churma, Gruca,
    Burke, Lipfird and Kane -- the plaintiff did not rebut either
    the delay or the prejudice prong, meaning that the Court did
    not need to determine the issue that is before the Court today.
    Even if one could read our prior cases as requiring the
    plaintiff to rebut both prongs of the laches test, see, e.g. Mroz
    v. Dravo Corp., 
    429 F.2d 1156
    , 1161 (3d Cir. 1970) (not
    considering prejudice prong when, but not necessarily
    because, plaintiff had not rebutted delay prong), such a
    36
    reading would be logically inconsistent with the Court’s
    subsequent holding in Central Pennsylvania Teamsters that
    each prong is an “essential element[]” of the doctrine of
    laches, 
    85 F.3d at 1108
    . It simply defies elementary logic to
    require a plaintiff bearing the burden of proof on rebuttal to
    show that the defendant cannot invoke the laches doctrine
    because both essential elements are missing, when one
    missing element would negate the doctrine. As Judge Becker
    explained in Anaconda:
    [R]equiring the plaintiff to carry this double
    burden would be inconsistent with the
    conceptual structure of the laches doctrine,
    which requires the court to find both
    inexcusable delay on the part of the plaintiff and
    prejudice to the defendant. If a plaintiff rebuts
    the presumption as to either of the two
    elements, the court cannot find that both
    elements exist, and therefore cannot uphold the
    defense of laches.
    
    485 F. Supp. at
    428 n.14. Put differently, if two conditions
    must be satisfied for a rule to apply, then (even if we presume
    both to be satisfied) negation of either of those conditions (by
    rebutting that presumption) defeats application of the rule.
    Therefore, because the majority has concluded that the
    older cases require the plaintiff to rebut both prongs of the
    laches test, I recommend that the Court consider en banc
    whether the older cases can be reconciled with our decision in
    Central Pennsylvania Teamsters.
    Here, the District Court concluded that Santana
    “proffered sufficient evidence that Bobrick did not suffer
    material prejudice as a result of the delay.” (App. 79.) I do
    not believe that in reaching that conclusion the District Court
    abused its discretion, which is the standard of review we must
    apply. See Churma, 
    514 F.2d at 593
    .
    37
    Having concluded that laches does not bar Santana’s
    Lanham Act claim, I would address the merits of Santana’s
    appeal on the application of the Noerr-Pennington doctrine to
    the Lanham Act claim.
    I
    38
    

Document Info

Docket Number: 03-1845, 03-2283, 03-2481

Judges: Roth, Ambro, Chertoff

Filed Date: 2/9/2005

Precedential Status: Precedential

Modified Date: 10/18/2024

Authorities (42)

Anaconda Co. v. Metric Tool & Die Co. ( 1980 )

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Kane v. Union of Soviet Socialist Republics ( 1951 )

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1993-1-trade-cases-p-70293-39-fed-r-evid-serv-234-petruzzis-iga ( 1993 )

Santana Products, Inc. v. Bobrick Washroom Equipment, Inc. ( 2003 )

Stearns Airport Equipment Co. v. FMC Corp. ( 1999 )

Marvin E. Lipfird v. Mississippi Valley Barge Line Company, ... ( 1962 )

robert-l-gruca-v-united-states-steel-corporation-in-no-73-1083-and ( 1974 )

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Eastern Railroad Presidents Conference v. Noerr Motor ... ( 1961 )

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Ronald A. Schachar v. American Academy of Ophthalmology, ... ( 1989 )

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EQUAL EMPLOYMENT OPPORTUNITY COMMISSION, Appellant, v. the ... ( 1984 )

California Motor Transport Co. v. Trucking Unlimited ( 1972 )

Baczor v. Atlantic Richfield Co. ( 1976 )

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