Neology Inc. v. Federal Signal Corporation et al
MEMORANDUM AND ORDER re 133 SEALED MOTION for Leave to File Motion for Partial Summary Judgment of Infringement with Proposed Order and Exhibits A and B filed by Neology Inc. Signed by Judge Mary Pat Thynge on 9/21/2012. (cak)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
FEDERAL SIGNAL CORPORATION,
FEDERAL SIGNAL TECHNOLOGIES,
LLC, and SIRIT CORP.,
C. A. No. 11-672-LPS-MPT
Neology, Inc. (“plaintiff) filed a complaint against Federal Signal Corporation,
Federal Signal Technologies, LLC, and Sirit Corp. (collectively “defendants”) on July 29,
2011, claiming infringement of six of its patents.1 On June 18, 2012, the court issued a
Report and Recommendation which denied plaintiff’s motion for preliminary injunction,
but agreed, in part, with its proposed preliminary claim construction.2 Following
adoption of the Report and Recommendation by the Honorable Leonard P. Judge Stark
on August 2, 2012,3 plaintiff moved for leave to file a motion for partial summary
judgment of infringement regarding U.S. Patent No. 7,081,891 (“the ‘891 patent”) and
U.S. Patent No. 7,671,746 (“the ‘746 patent”).4 Leave is required as a scheduling order
entered on July 27, 2012, provides “no case dispositive motions may be filed at a time
before” November 4, 2013, “[u]nless the Court directs otherwise.”5 Defendants filed
their response on August 24, 2012, opposing the motion,6 and plaintiff filed its reply on
September 4, 2012.7
Positions of the Parties
Plaintiff bases its request for leave to file an early partial summary judgment
motion prior to the date in the July 27, 2012 scheduling order on the fact “the Court
already ruled that Neology established a likelihood of infringement regarding Claim 1 of
[the ‘819 Patent] and Claim 16 of [the ‘746 Patent].”8 Additionally, plaintiff argues no
additional evidence or argument merits reconsideration of construction of those claims
because “[a]ny such evidence was already presented to, and subsequently rejected by,
the Court”9 in the briefing and hearing on Neology’s motion for preliminary injunction.
Plaintiff emphasizes that allowing the partial summary judgment motion will purportedly
“narrow the claims and issues . . . for further discovery and trial,”10 which serves
judicial economy and avoids needless, duplicative expenses to the parties.11
Defendants respond asserting plaintiff has shown no valid reason for an early
consideration of partial summary judgment, and “[d]oing so would be inefficient, and
D.I. 116 at ¶ 10.
D.I. 133 at 1.
Id. at 2.
Id. at 3.
Id. at 2.
would derail the case schedule.”12 They also contend the motion is a veiled “end-run
around the controlling case law,” by resting on the “false premise that the case is done
with respect to claim construction and infringement issues for these two patents.”13
In countering defendants’ arguments, plaintiff contends: (1) the motion for partial
summary judgment will not cause undue delay;14 (2) it will not require a full-blown
Markman hearing;15 (3) defendants failed to articulate what new arguments or discovery
they need to oppose plaintiff’s motion;16 and (4) the motion will narrow legal issues,
purportedly resulting in saving judicial resources and reducing expensive, duplicative,
Both parties place great emphasis on the effect of the preliminary claim
construction adopted by the court in the June 18, 2012 Report and Recommendation.18
Plaintiff maintains the court “preliminarily ruled on claim construction and infringement
matters,” in which it agreed with plaintiff’s proposed construction on certain terms.19
Therefore, plaintiff propounds “[d]efendants cannot offer any additional evidence that
would warrant modification of the Court’s construction,”20 which would result in genuine
factual disputes of infringement of claim 1 of the ‘819 patent and claim 16 of the ‘746
D.I. 139 at 1.
Id. at 3.
D.I. 144 at 1.
Id. at 2.
Id. at 3.
Id. at 4.
D.I. 133 at 2.
Although the court did adopt plaintiff’s proposed construction as to certain
terms for the purpose of the preliminary injunction, “a conclusion of law such as claim
construction is subject to change upon the development of the record after a district
court’s decision on a motion for preliminary injunction.”22 “[T]he trial court is free to
revisit an initial claim construction adopted for preliminary injunction, recognizing that a
preliminary construction made without full development of the record or issues should
be open to revision.”23 Additionally, “[a]fter discovery the court expects the parties to
refine the disputed issues and learn more about the claim terms and technology, at
which point a more accurate claim construction can be attempted.”24 The Report and
Recommendation acknowledged this consideration, stating the “constructions given to
disputed claim terms at the preliminary injunction stage may be tentative and be altered
Also mitigating the effect of the adopted claim construction, the standard
employed at the preliminary injunction stage is far less stringent than what a plaintiff
must prove at trial. To obtain a preliminary injunction, the moving party must only
establish “reasonable likelihood on the merits,”26 whereas at trial, it is plaintiff’s burden
Id. at 3.
Pfizer, Inc. v. Teva Pharms. USA, Inc., 429 F.3d 1364, 1377 (Fed. Cir. 2005)
(citing Jack Guttman, Inc. v. Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir.
SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1291 (Fed. Cir. 2005)
D.I. 94 at 15 (citations omitted).
Hybritech, Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed. Cir. 1988).
“of proving infringement by a preponderance of the evidence.”27 This difference
underscores the fact that “[t]he purpose of a preliminary injunction in a patent
infringement suit . . . is not finally to determine the ultimate rights of the parties, but
rather to protect their respective rights pending the final disposition of the litigation.”28 In
moving for leave to file a motion for partial summary judgment in the wake of the court’s
decision, plaintiff is attempting to use the preliminary injunction process for the same
purpose the court explicitly warned against.
As a result of the limited effect of claim construction during the preliminary
injunction stage, the court doubts the alleged time and resource saving benefits
advanced by plaintiff. Instead, defendants may seek a revision of the claim term and
“offer other additional claim construction and non-infringement arguments during the
merits phase.”29 Also, any partial summary judgment proceeding at this stage would
likely be subject to objection after decision, thereby introducing additional steps which
serve only to prolong the life of this action. The more efficient approach is to allow the
case to proceed in accordance with the scheduling order, which was carefully
negotiated between parties a mere three weeks before the filing of the motion currently
“The purpose of a scheduling order is to provide concrete deadlines on which the
Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361 (Fed. Cir. 1983)
Superior Electric Co. v. Gen. Radio Corp., 194 F. Supp. 339, 347 (D.N.J.
1961), aff’d, 321 F.2d 857 (3d Cir. 1963) (emphasis added).
D.I. 139 at 6.
parties can rely in planning their respective litigation strategies.”30 Taking into account
all relevant considerations, the court does not find the good cause necessary to modify
the scheduling order as currently entered.31 Instead, the agreed upon order calling for
case dispositive motions to be filed on November 4, 2013 will control. By that time, the
parties will have ample opportunity to address summary judgment for all patents at
Therefore, for the reasons contained herein, plaintiff’s motion for leave to file
motion for partial summary judgment of infringement (D.I. 133) is DENIED.
Date: September 21, 2012
/s/ Mary Pat Thynge
UNITED STATES MAGISTRATE JUDGE
McLaughlin v. Diamons State Port Corp., C.A. 03-617-GMS, 2004 WL
2958664, at *4 (D. Del. Dec. 21, 2004).
See FED. R. CIV. P. 16(b)(4) (“A schedule may be modified only for good cause
and with the judge’s consent.”).
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