Lifted Limited, LLC v. Novelty Inc.

Filing 112

ORDER by Judge Philip A. Brimmer on 03/06/2018, re: 45 Plaintiff's Motion to Strike New Arguments Raised in Defendant's Reply in Support of its Motion for Partial Summary Judgment is DENIED as moot; 33 Defendant Novelty, Inc.'s Motion for Partial Summary Judgment is DENIED without prejudice. (sphil, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Philip A. Brimmer
Civil Action No. 16-cv-03135-PAB-GPG
LIFTED LIMITED, LLC, a Colorado limited liability company,
Plaintiff,
v.
NOVELTY INC., an Indiana corporation, and
WAL-MART STORES, INC., a Delaware corporation,
Defendants.
_____________________________________________________________________
ORDER
_____________________________________________________________________
This matter is before the Court on Defendant Novelty, Inc’s Motion for Partial
Summary Judgment [Docket No. 33]. The Court has subject matter jurisdiction
pursuant to 28 U.S.C. § 1331.
On June 5, 2017, defendant Novelty, Inc. filed a motion for partial summary
judgment on plaintiff Lifted Limited, LLC’s claim for patent infringement. Docket No. 33.
As a basis for the motion, defendant argues that plaintiff’s design patent – U.S. Design
Patent No. D662,655 – is invalid because it is primarily functional. Id. at 3, 8-15. On
June 26, 2017, plaintiff filed a response arguing, among other things, that Novelty’s
motion improperly focuses on the functionality of specific elements of the claimed
design rather than on the design’s overall appearance. Docket No. 37 at 16.
Alternatively, plaintiff asserts that Novelty’s motion is premature and requests, pursuant
to Fed. R. Civ. P. 56(d), that the Court defer ruling on the motion to allow the parties to
conduct further fact and expert discovery. Id. at 17. In support of Rule 56(d) relief,

plaintiff submitted a declaration by its attorney, Kent Dallow, that, at the time Novelty
filed its summary judgment motion, plaintiff had “not received the full discovery
requested on the topics covering Novelty’s functionality arguments.” Docket No. 37-5 at
5, ¶ 15. On July 20, 2017, Novelty filed a reply in support of its motion for summary
judgment. Docket No. 44. Although Novelty acknowledges plaintiff’s argument that the
summary judgment motion is premature, Novelty does not otherwise address the
propriety of Rule 56(d) relief. See id. at 1 n.1.
The day after Novelty filed its motion for summary judgment, this matter was set
for a claim construction hearing on February 8, 2018. Docket No. 35. Like the
summary judgment briefing, the parties’ claim construction briefs focus on the
functionality of various elements of the ’655 Design Patent. In its opening claim
construction brief, Novelty requests that those functional elements be excluded from the
claimed scope of the design patent. Docket No. 85 at 7-14. Plaintiff responds that
Novelty’s brief improperly focuses on the functionality of individual elements of the
claimed design rather than on the “ornamental contribution” of those elements to the
design’s overall appearance. Docket No. 94 at 2-3, 8-11.
The parties appeared before the Court on February 8, 2018 for the claim
construction hearing. Docket No. 107. At the start of the hearing, defendant Wal-Mart
Stores, Inc. moved for a continuance on the ground that it had been recently added as
a defendant in the lawsuit and thus had been unable to f ile a claim construction brief.
See id. The Court granted the motion. Id. The Court further informed the parties that it
would defer ruling on Novelty’s summary judgment motion until after it had construed
the claims in the design patent, given the significant overlap in the functionality
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arguments raised in the summary judgment and claim construction briefing.
Fed. R. Civ. P. 56(d) permits a court to “defer considering [a motion for summary
judgment] or deny it” if the nonmoving party “shows by affidavit or declaration that, for
specified reasons, it cannot present facts essential to justify its opposition.” Plaintiff
argues that Rule 56(d) is appropriate because Novelty filed its motion for summary
judgment early in the litigation and at a time when plaintiff had “not received the full
discovery requested on the topics covering Novelty’s functionality arguments.” Docket
No. 37-5 at 5, ¶ 15. Although Novelty argues that plaintiff has not identified any
disputed issues of material fact precluding summary judgment, Docket No. 44 at 1 n.1,
Novelty does not otherwise oppose plaintiff’s request for relief under Rule 56(d).
The propriety of deferring resolution of Novelty’s summary judgment motion at
this stage of the proceedings is made further evident by the significant overlap in the
functionality arguments asserted on summary judgment and in the claim construction
briefing. In patent infringement cases, courts frequently deny summary judgment
motions that are filed before the claim construction hearing when the resolution of
issues raised on summary judgment depends on the Court’s determination of the scope
and meaning of the patent claims asserted. See, e.g., DOK Solution LLC v. FKA
Distrib. Co., 2015 WL 1606339, at *1-2 (M.D. Fla. Apr. 8, 2015) (denying motion for
summary judgment where court had not yet construed claims at issue); Intellect
Wireless, Inc. v. T-Mobile USA, Inc., 735 F. Supp. 2d 928, 933 (N.D. Ill. 2010) (denying
motion for summary judgment where claim construction was necessary to construe
disputed terms). Here, Novelty moves for summary judgment on the ground that the
’655 Design Patent is primarily functional and therefore invalid. Docket No. 33 at 3, 83

15. However, the functionality of the various elements of the ’655 Design Patent is also
the focus of the parties’ claim construction briefing. Because a determination of the
scope of the ’655 Design Patent after a full claim construction hearing will likely be
dispositive of Novelty’s invalidity arguments, the Court finds that Novelty’s motion for
partial summary judgment is premature. The Court will therefore deny the motion
without prejudice to Novelty’s ability to re-file it after the Court has issued its claim
construction ruling. It is therefore
ORDERED that Defendant Novelty, Inc.’s Motion for Partial Summary Judgment
[Docket No. 33] is DENIED without prejudice. It is further
ORDERED that Plaintiff’s Motion to Strike New Arguments Raised in
Defendant’s Reply in Support of its Motion for Partial Summary Judgment [Docket No.
45] is DENIED as moot.

DATED March 6, 2018.
BY THE COURT:

s/Philip A. Brimmer
PHILIP A. BRIMMER
United States District Judge

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