Patent Watch: Baron Servs., Inc. v. Media Weather Innovations, LLC

by BakerHostetler

[Courts] should grant requests under Rule 56(d) "when the party opposing the [summary judgment] motion has been unable to obtain responses to his discovery requests" and the discovery sought would be essential to opposing summary judgment and "relevant to the issues presented by the motion for summary judgment."

On May 7, 2013, in Baron Servs., Inc. v. Media Weather Innovations, LLC, the U.S. Court of Appeals for the Federal Circuit (Dyk, Reyna, Prost*) vacated and remanded the district court's summary judgment that MWI did not infringe U.S. Patent No. 6,490,525, which related to computerized systems and methods for reporting and forecasting real-time weather information, as well as the district court's award of $243,757.45 in attorney fees. The Federal Circuit stated:

Under Federal Rule of Civil Procedure 56(d), a party opposing a summary judgment motion may request that a district court delay ruling on the motion in order to obtain additional discovery without which "it cannot present facts essential to justify its opposition." "The whole purpose of discovery in a case in which a motion for summary judgment is filed is to give the opposing party an opportunity to discover as many facts as are available and he considers essential to enable him to determine whether he can honestly file opposing affidavits." Accordingly, [courts] should grant requests under Rule 56(d) "when the party opposing the [summary judgment] motion has been unable to obtain responses to his discovery requests" and the discovery sought would be essential to opposing summary judgment and "relevant to the issues presented by the motion for summary judgment." . . .

Here, Baron requested that the district court delay ruling on MWI's summary judgment motion until it had to the opportunity to examine MWI's source code and to depose Ritterbusch and Fannin. It adequately explained how that additional discovery was relevant and essential for its opposition to MWI's summary judgment motion. Baron detailed in its briefs to the district court and during the summary judgment hearing how MWI's source code could show that the accused devices met several of the limitations of the asserted claims. As shown in its infringement contentions, Baron asserted that certain features of the accused products met the "logic," "analyze," and "computer" limitations found in some of the asserted claims. Per the Ritterbusch and Fannin affidavits, those features are enabled by MWI's source code. MWI asserted, though, that those features are not enabled by the source code in an infringing manner. Examining the source code would have enabled Baron to determine if MWI's noninfringement position was correct -- which Baron believed to not be the case given the disclosures in the provisional patent application produced by MWI regarding how the accused products might analyze data from NWS warnings with logic implemented on a computer. The opportunity for the reasonable chance to disprove MWI's position on noninfringement was relevant and essential to Baron's opposition of MWI's motion for summary judgment.

Baron's opportunity to depose Ritterbusch and Fanninwas equally important to Baron's ability to adequately oppose summary judgment. As demonstrated by their affidavits, Ritterbusch and Fannin both possessed personal knowledge of the functionality of the accused products. Their affidavits were MWI's primary evidence to support its motion for summary judgment, and the statements made in them were accepted as true by the district court. Deposing Ritterbusch and Fannin would have provided Baron its principal opportunity to directly challenge the veracity of the statements made in their affidavits. Therefore, under the circumstances here, it was improper for the district court to have refused Baron's request to delay ruling on MWI's summary judgment motion until Baron had the opportunity to access MWI's source code and depose Ritterbusch and Fannin. . . . The district court prematurely granted summary judgment of noninfringement to MWI. We therefore vacate the district court's summary judgment order, including its dismissal of Baron's outstanding motions as moot, and the district court's order and judgment awarding attorney's fees to MWI. We remand this case to the district court for further proceedings consistent with this opinion. In remanding for further proceedings, we express no opinion as to whether Baron has a meritorious cause of action; after claim construction and further discovery, it may be that the cause of action is non-meritorious. But Baron is entitled to the opportunity to prove otherwise under a correct claim construction with appropriately limited discovery.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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