Steyr Arms Inc v. Beretta USA Corp

Filing 60

MEMORANDUM OPINION AND ORDER re: MOTION to Strike 50 and MOTION Rule 56(d) 53 - If Steyr chooses to refile its memorandum in support of its motion for summary judgment, and Beretta chooses to object to Steyrs evidence, then, as set forth in Rule 56(c)(2), the Court will consider the substance of objections while ruling on Steyrs summary judgment motion. Therefore, the Court denies without prejudice Berettas motion to strike 50 as it relates to Mr. Byrons declaration. Steyr has identified shortcomings that it believes may exist in Mr. Kelloggs declaration. (Doc. 59 , p. 3). Even if Steyr believes its summary judgment motion is well founded, Steyr would be remiss in not presenting thorough opposition to Berettas summary judgment motio n. Accordingly, the Court grants Steyrs Rule 56(d) motion 53 . For the reasons stated above, the Court directs the Clerk to please strike Steyrs memorandum in support of Steyrs Motion for Summary Judgment (Doc. 44 ) from the docket. Steyr may depose Mr. Kellogg on or before February 8, 2019. Responses to the motions for summary judgment (Docs. 43 , 44 ) are due on or before March 1, 2019. Replies are due on or before March 15, 2019. Signed by Judge Madeline Hughes Haikala on 1/9/2019. (KEK)

FILED
2019 Jan-09 PM 04:40
U.S. DISTRICT COURT
N.D. OF ALABAMA

UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ALABAMA
SOUTHERN DIVISION

STEYR ARMS, INC.,
Plaintiff
v.
BERETTA USA CORP.,
Defendant.

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Case No.: 2:15-cv-01718-MHH

MEMORANDUM OPINION AND ORDER
This matter is before the Court on two motions. Defendant Beretta USA
Corp. has filed a motion to strike in which Beretta asks the Court (1) to suspend the
summary judgment briefing schedule; (2) to strike plaintiff Steyr Arms, Inc.’s
memorandum in support of its summary judgment motion because the
memorandum does not comply with a court order governing page limits for
briefing; and (3) to strike certain portions of a declaration that Steyr filed in
support of its summary judgment motion. (Doc. 50). Steyr has filed a Rule 56(d)
motion in which Steyr asks for permission to depose Jason Kellogg to enable Steyr
to respond to Beretta’s summary judgment motion. (Doc. 53). This order resolves
both motions.

I.

PROCEDURAL BACKGROUND
In its complaint, Steyr asserts a claim of patent infringement against Beretta

in connection with United States Letters Patent No. 6,260,301 entitled, “Pistol,
Whose Housing Is Composed of Plastic.” (Doc. 1, ¶ 7). On March 23, 2016, the
Court entered an Initial Order which sets the page limits for briefs. (Doc. 12, pp.
5-6). The order states: “Briefs accompanying motions and briefs in opposition to
motions should not exceed 25 pages unless the Court grants permission for a party
to file a motion that exceeds the Court’s page limits.” (Doc. 12, pp. 5-6).
On April 19, 2018, the Court issued a memorandum opinion and claim
construction order. (Doc. 40). After a status conference with the parties, the Court
ordered as follows:
[T]he parties shall file summary judgment motions regarding patent
infringement on or before July 27, 2018. If either party believes it
needs discovery to respond to the opposing party’s summary
judgment motion, then the party seeking discovery shall file a Rule
56(d) affidavit or declaration on or before August 10, 2018. The Court
STAYS the remaining deadlines in this matter and stays formal
discovery until further notice.
(Doc. 42).
On July 27, 2018, Steyr filed a motion for summary judgment, a 26-page
memorandum in support of the motion (20 pages of which contain substantive
content), a 10-page “Statement of Facts” in support of its summary judgment
motion, and two declarations. (Docs. 43, 44, 44-1, 44-2, 44-4). The same day,
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Beretta filed a motion for partial summary judgment, a 33-page memorandum in
support of the motion (25 pages of which contain substantive content), and two
declarations. (Docs. 45, 46-1, 46-12, 48).
On August 3, 2018, Beretta filed its motion to strike, (Doc. 50), and on
August 10, 2018, Steyr filed its Rule 56(d) motion, (Doc. 53).

This Court

suspended the summary judgment briefing schedule, pending resolution of
Beretta’s motion to strike and Steyr’s Rule 56(d) motion. (Doc. 56).
II.

ANALYSIS
a. BERETTA’S MOTION TO STRIKE
i. Request to Suspend Briefing Schedule
Beretta asked the Court to suspend the briefing schedule for the parties’

cross-motions for summary judgment. (Doc. 50, p. 2). On August 15, 2018, this
Court entered an order suspending the summary judgment briefing schedule. (Doc.
56). Accordingly, Beretta’s motion as it relates to suspension of the briefing
schedule is moot.
ii. Request to Strike Steyr’s Summary Judgment Memorandum
Beretta asks the Court to strike Steyr’s summary judgment brief because the
brief exceeds the 25-page limit set in the Initial Order in this case. (Doc. 50, p. 2).
The Initial Order states: “Briefs accompanying motions and briefs in opposition to
motions should not exceed 25 pages unless the Court grants permission for a party
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to file a motion that exceeds the Court’s page limits.” (Doc. 12, p. 5-6). Although
the substantive content in Steyr’s summary judgment brief occupies only 20 pages,
Steyr also filed a 10-page document entitled “Statement of Facts in Support of
Plaintiff’s Motion for Summary Judgment of Infringement of U.S. Patent No.
6,260,301,” pushing Steyr’s brief over the Court’s 25-page limit. (Doc. 44-1).
Steyr did not ask for permission to exceed the page limit.
The Court construes Beretta’s motion to strike as a motion to sanction Steyr
pursuant to Rule 16 of the Federal Rules of Civil Procedure. Under the subsection
entitled “Sanctions,” Rule 16 provides:
(1) In General. On motion or on its own, the court may issue any
just orders, including those authorized by Rule 37(b)(2)(A)(ii)–(vii), if
a party or its attorney:
...
(C) fails to obey a scheduling or other pretrial order.
FED. R. CIV. P. 16(f) (emphasis in original). Rule 37(b)(2)(A)(iii) authorizes a
district court to sanction a party by “striking pleadings in whole or in part . . . .”
FED. R. CIV. P. 37(b)(2)(A)(iii).
Steyr argues, without citation to authority, the 10-page “Statement of Facts”
which Steyr filed as a document separate from its brief should not count towards
the 25-page limit for briefs. (Doc. 52, p. 14). Steyr also argues, without citing
authorities or examples, that its method of separately summarizing the facts
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relevant to its motion is a “common practice.” (Doc. 52, p. 14). The Court is not
familiar with this “practice.” In this district, parties commonly include a statement
of facts in a summary judgment brief. See, e.g., “Sample Appendix II - Summary
Judgment Requirements” available at https://www.alnd.uscourts.gov/content/
chief-judge-karon-o-bowdre (“All briefs submitted either in support of or
opposition to a motion must begin with a statement of allegedly undisputed
relevant

material

facts . . . .”);

“Uniform

Initial

Order”

available

https://www.alnd.uscourts.gov/content/judge-virginia-emerson-hopkins

at

(“The

parties’ submissions in support of and in opposition to summary judgment motions
must consist of: (1) a brief containing, in separately identified sections, (i) a
statement of allegedly undisputed relevant material facts . . . .”); “Appendix II (SJ
Reqs)” available at https://www.alnd.uscourts.gov/content/judge-r-david-proctor
(“The parties’ submissions in support of and in opposition to summary judgment
motions must consist of: (1) a brief containing, in separately identified sections, (i)
a statement of allegedly undisputed relevant material facts . . . .”). Steyr’s local
counsel is very familiar with the practices in this district.
The undersigned has not issued an order that explicitly directs parties to
include a statement of facts in a summary judgment brief because parties ordinarily
do so in this district as a matter of course. The Court has ordered the parties not to
exceed the page limits set in the Initial Order unless a party requests permission
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from the Court. (Doc. 12). If there was confusion, Steyr easily could have asked
for clarification of the Court’s order or filed a motion for excess pages.
Under the circumstances, the Court strikes Steyr’s summary judgment brief
but offers Steyr the option of filing a substitute brief that conforms to the Court’s
Initial Order. The Court cautions Steyr to comply with court orders or to request
clarification of or relief from those orders if necessary. 1
iii. Request to Strike Byron’s Declaration Testimony
Beretta asks the Court to strike certain portions of Mr. Byron’s declaration,
namely paragraphs 5, 7, 20-22, and 26-29. (Doc. 50, p. 2). Beretta argues that the
statements contain “improper inadmissible conclusory statements made without
any underlying factual support, basis or foundation; inadmissible irrelevant subject
matter; and inadmissible legal conclusions, and, as a result, lack any probative
value . . . .” (Doc. 50, p. 2).
Beretta’s motion to strike does not conform to the Federal Rules of Civil
Procedure. Pursuant to Rule 56(c)(2), in response to a summary judgment motion,

1

Beretta argues it will incur prejudice if the Court permits Steyr to file a replacement brief
because Steyr now has “had the opportunity to study Defendant’s non-infringement brief . . . .”
(Doc. 51, p. 13). Beretta has not explained why Steyr’s awareness of Beretta’s arguments would
disadvantage Beretta. The Court does not find potential prejudice to Beretta in permitting Steyr
to file a conforming brief that is substantively consistent with Steyr’s initial submission. This is
not an opportunity for Steyr to revise its current arguments or to provide new arguments. It
simply is an opportunity for Steyr to comply with the Court’s Initial Order. The Court notes that
some of the assertions in Steyr’s “Statement of Facts” document shed no light on the summary
judgment issues. Steyr may omit those statements if it chooses to file a revised summary
judgment brief.
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“[a] party may object that the material cited to support or dispute a fact cannot be
presented in a form that would be admissible in evidence.”

FED. R. CIV. P.

56(c)(2). But “[t]here is no need to make a separate motion to strike.” FED. R.
CIV. P. 56(c), advisory committee’s note to 2010 amendments; see Campbell v.
Shinseki, 546 Fed. Appx. 874, 879 (11th Cir. 2013) (“The plain meaning of
[amended Rule 56(c)(2)] show[s] that objecting to the admissibility of evidence
supporting a summary judgment motion is now a part of summary judgment
procedure, rather than a separate motion to be handled preliminarily.”).
If Steyr chooses to refile its memorandum in support of its motion for
summary judgment, and Beretta chooses to object to Steyr’s evidence, then, as set
forth in Rule 56(c)(2), the Court will consider the substance of objections while
ruling on Steyr’s summary judgment motion.
Therefore, the Court denies without prejudice Beretta’s motion to strike as it
relates to Mr. Byron’s declaration.
b. STEYR’S RULE 56(d) MOTION
Steyr filed a Rule 56(d) motion in which it asks the Court to permit it to
depose Jason Kellogg in conjunction with its response to Beretta’s motion for
summary judgment. (Doc. 53). Under Rule 56(d):

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If a nonmovant shows by affidavit or declaration that, for specified
reasons, it cannot present facts essential to justify its opposition, the
court may:
...
(2) allow time to obtain affidavits or declarations or to
take discovery . . . .
FED. R. CIV. P. 56(d). The nonmovant “cannot ‘rest on vague assertions that
additional discovery will produce needed, but unspecified facts,’ but rather must
specifically demonstrate ‘how postponement of a ruling on the motion will enable
[them], by discovery or other means, to rebut the movant’s showing of the absence
of a genuine issue of fact.’” Fla. Power & Light Co. v. Allis Chalmers Corp., 893
F.2d 1313, 1316 (11th Cir. 1990) (quoting Wallace v. Brownell Pontiac-GMC Co.,
Inc., 703 F.2d 525, 527 (11th Cir. 1983)) (alteration in original). “Whether to
grant or deny a Rule 56[d] motion for discovery requires the court to balance the
movant’s demonstrated need for discovery against the burden such discovery will
place on the opposing party.” Harbert Int’l v. James, 157 F.3d 1271, 1280 (11th
Cir. 1998).2
Steyr states that Beretta, in its motion for partial summary judgment, “relies
solely on the Declaration of Jason Kellogg.” (Doc. 54, p. 2). Steyr asserts that it
must depose Mr. Kellogg “to obtain facts essential to justify its opposition to
2

The original quote in Harbert Int’l v. James references “Rule 56(f).” Effective December 1,
2010, Rule 56(f) was reclassified as Rule 56(d) with no substantial change. See Fed R. Civ. P.
56, advisory committee notes to the 2010 amendments.
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Defendant’s motion for partial summary judgment.” (Doc. 54, p. 2). In support of
its motion, Steyr has submitted the declaration of Glenn Henneberger, Steyr’s
attorney. (Doc. 54-1). In his declaration, Mr. Henneberger states, “Steyr believes
it is necessary to depose Mr. Kellogg to obtain the facts essential to justify its
opposition to Defendant’s motion for partial summary judgment of noninfringement.” (Doc. 54-1, ¶ 6).
Mr. Henneberger makes only a vague assertion that Mr. Kellogg’s
deposition will produce needed, but unspecified facts. (See Doc. 54-1). Steyr
argues that Mr. Henneberger’s declaration is sufficient, given the lack of discovery
in this matter. (Doc. 59, pp. 3-4).3 Steyr should have produced a declaration that
indicates with more specificity what Steyr seeks to discover by deposing Mr.
Kellogg. Nevertheless, given the motion’s narrow request, it is clear that Steyr
seeks to gather information related to Mr. Kellogg’s statements that were used to
support Beretta’s summary judgment brief.
In Estate of Russell v. Wortham, the plaintiff asserted claims against the
defendants in connection with the death of the decedent who was in the
defendants’ custody. No. 1:15-CV-1080-VEH, 2018 WL 1408481, at *1-2 (N.D.
Ala. Mar. 21, 2018). The defendants moved for summary judgment, and the
plaintiff filed a Rule 56(d) motion supported by an affidavit from the plaintiff’s

3

The parties have exchanged claim construction documents. (Doc. 59, p. 2).
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attorney. Estate of Russell, 2018 WL 1408481, at *3. In response the defendants
argued that, among other things, the plaintiff’s affidavit contained only vague
assertions as to how further discovery would assist the plaintiff. Estate of Russell,
2018 WL 1408481, at *3.

Judge Hopkins granted the plaintiff’s Rule 56(d)

motion, explaining:
While the Rule 56(d) standard requires specificity, there is no
requirement that a movant predict exactly what will be said at a
deposition. C.f. FED. R. CIV. P. 56(d). Here, the Plaintiff has
submitted an affidavit that he expects to obtain facts directly related to
the issue of notice. This Court believes that the “plaintiff is entitled to
discovery in order to . . . test the veracity of the declaration testimony
submitted by defendant.” See Royal Oak Enterprises, LLC v.
Nature’s Grilling Prods., No. 1:10-CV-2494-JEC, LLC, 2011 U.S.
Dist. LEXIS 133856, 2011 WL 5858057, *3 (N.D. Ga. Nov. 21,
2011). If the evidence is as the Defendants purport it to be, then they
should have nothing to worry about. However, the Plaintiff is entitled
to some limited discovery to permit an adequate response.
Estate of Russell, 2018 WL 1408481, at *5.
The reasoning in Estate of Russell is persuasive. Steyr should have an
opportunity to test Mr. Kellogg’s veracity and probe the information in his
declaration. See Fla. Power & Light, 893 F.2d at 1316 (“Before entering summary
judgment the district court must ensure that the parties have an adequate
opportunity for discovery.”). Beretta has not identified undue prejudice that it may

10

suffer if the Court permits this deposition. (See Doc. 58). Thus, Steyr’s need for
discovery outweighs the burden that such discovery may place on Beretta.4
Beretta argues that Steyr, in making a Rule 56(d) motion, is acting in a
manner that is in conflict with Steyr’s filing of a motion for summary judgment
because Steyr, in its motion for summary judgment, represents that it possesses the
requisite information to prove its infringement claim. (Doc. 58, p. 3). Beretta’s
argument conflates the arguments that Steyr makes in its motion for summary
judgment with the arguments that Steyr may make in its response to Beretta’s
motion for summary judgment. Steyr has identified shortcomings that it believes
may exist in Mr. Kellogg’s declaration. (Doc. 59, p. 3). Even if Steyr believes its
summary judgment motion is well founded, Steyr would be remiss in not
presenting thorough opposition to Beretta’s summary judgment motion.

4

Beretta cites Pediatric Medical Devices, Inc. v. Indiana Mills & Mfg. Inc. as instructive
authority. (Doc. 58, pp. 7-8). In Pediatric Medical Devices, the plaintiff owned a patent for a
medical device that improved upon the prior art by removing straps from the device. 984 F.
Supp. 2d 1362, 1364 (N.D. Ga. 2013). The plaintiff alleged that the defendant’s medical device
which used straps infringed on plaintiff’s patent. 984 F. Supp. 2d at 1364. The court issued a
claim construction order that defined a claim limitation as meaning that the device would be used
without straps or belts. 984 F. Supp. 2d at 1364. As a result, the defendant moved for summary
judgment arguing that it did not infringe on the plaintiff’s patent because its device uses straps.
984 F. Supp. 2d at 1364. The plaintiff, pursuant to a Rule 56(d) motion, requested additional
discovery to show that the defendant’s device infringed on the claim limitation. 984 F. Supp. 2d
at 1367. The court denied the motion, stating that the defendant’s product undisputedly used
straps and “[n]o amount of additional discovery can change this fact.” 984 F. Supp. 2d at 1367.
Pediatric Medical Devices is factually distinguishable from the current matter. The dispute in
this case is not nearly as straightforward as the matter in Pediatric Medical Devices. It is
appropriate for Steyr to explore the assertions that Mr. Kellogg has made in his declaration.
11

Accordingly, the Court grants Steyr’s Rule 56(d) motion.
III.

CONCLUSION
For the reasons stated above, the Court directs the Clerk to please strike

Steyr’s memorandum in support of Steyr’s Motion for Summary Judgment (Doc.
44) from the docket. Steyr may depose Mr. Kellogg on or before February 8,
2019. Responses to the motions for summary judgment (Docs. 43, 44) are due on
or before March 1, 2019. Replies are due on or before March 15, 2019.
DONE and ORDERED this 9th day of January, 2019.

_________________________________
MADELINE HUGHES HAIKALA
UNITED STATES DISTRICT JUDGE

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