Webasto Thermo & Comfort North America, Inc. et al v. BesTop, Inc.
OPINION AND ORDER Denying 11 MOTION to Dismiss filed by BesTop, Inc. ( Answer to Complaint due by 6/8/2017) Signed by District Judge Paul D. Borman. (DTof)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
WEBASTO THERMO & COMFORT
NORTH AMERICA, INC. and
WEBASTO-EDSCHA CABRIO USA
Case No. 16-cv-13456
Paul D. Borman
United States District Judge
OPINION AND ORDER DENYING DEFENDANT’S MOTION TO DISMISS
FILED PURSUANT TO FED. R. CIV. P. 12(b)(6) (ECF NO. 11)
This action involves Plaintiffs Webasto Thermo & Comfort North America, Inc.
and Webasto-Edscha Cabrio USA, Inc.’s (collectively “Webasto”) claim that
Defendant Bestop, Inc. (“BesTop”) infringes Webasto’s U.S. Patent No. 9,346,342
(“the '342 Patent”), entitled “Vehicle Roof and Roof Opening Mechanism.” BesTop
asserts that the claims of the '342 Patent were disclosed in prior art and are therefore
unpatentable. BesTop now moves to dismiss under Fed. R. Civ. 12(b)(6).
Webasto alleges that on May 24, 2016, the United States Patent and Trademark
Office (“USPTO”) issued the '342 Patent and that Webasto holds all right, title and
interest in the '342 Patent with rights to enforce the '342 Patent and to sue for
infringement. (ECF No. 1, Complaint ¶ 8; Ex. A, U.S. Patent No. 9,346,342.) The
'342 Patent claims technology related to a vehicle roof and roof opening mechanism
that Webasto claims to have introduced to the public on March 27, 2015, at the Easter
Jeep Safari event in Moab, Utah. (Compl. ¶ 10-11.) Webasto alleges that the
Webasto roof opening mechanism provides an innovative and effective way to cover
and selectively uncover a roof opening. (Compl. ¶ 12.)
Webasto alleges that BesTop manufactures a roof opening mechanism under
the name “Sunrider For Hardtop” (“Sunrider”) that incorporates Webasto’s patented
roof opening mechanism and infringes one or more claims of the '342 Patent, either
literally or under the doctrine of equivalents. Webasto alleges that representatives of
BesTop were present at the 2015 Moab, Utah Jeep event and that, at that time, BesTop
did not offer a roof opening mechanism similar to or in-line with its current Sunrider.
(Compl. ¶¶ 13-18.)
Webasto alleges that BesTop’s Sunrider infringes at least claims 1 and 6 of the
'342 Patent. (Compl. ¶ 25.) Claim 6 of the '342 Patent recites:
A roof opening mechanism, being designed as an interchangeable insert,
for unlockable fixation at a roof structure of a vehicle roof, and
a base frame, which can be placed upon an edge region of
the roof structure, said edge region for limiting a roof
opening, further comprising a fabric covering element,
which, by at least one tensioning bow fixedly pivotable
with respect to the base frame, is displaceable between a
closed position for covering the roof opening and an
uncovering position for uncovering the roof opening,
wherein the tensioning bow is coupled to an auxiliary
tensioning bow fixedly pivotal to the base frame, and
wherein the tensioning bow, in relation to a vertical
longitudinal center plane of the roof, is on each of its two
sides connected to the auxiliary tensioning bow via a
the coupling rod being articulated to the auxiliary
tensioning bow and to the main tensioning bow via
intermediately positioned hinge points.
(Compl. ¶ 26, Ex. A, United States Patent No. 9,346,342, claim 6, PgID 38.) Webasto
alleges that BesTop’s Sunrider mechanism satisfies all of the limitations of claim 6 of
the '342 Patent. (Compl. ¶¶ 27-33.)
Claim 1 of the '342 Patent recites “A vehicle roof having a roof structure with
a roof opening, which, by a roof opening mechanism, can be closed or at least
partially uncovered as desired, said roof opening mechanism being designed as an
interchangeable insert. . . .” (Compl. ¶ 34. Ex. A, '342 Patent, claim 1, PgID 37.)
Claim 1 then recites the structural elements of the interchangeable insert which are
similar to those set forth connection with claim 6. (Id.) Webasto alleges that each of
the limitations of claim 1 of the '342 Patent are found in BesTop’s Sunrider
mechanism. (Compl. ¶ 35.)
Webasto alleges that BesTop adopted the Webasto patented design after having
seen Webasto’s design in at least March 2015 and was or should have been aware that
Webasto’s design incorporated patentable subject matter. Webasto alleges that
BesTop’s infringement has caused and continues to cause damage to Webasto and that
Webasto is entitled to recover damages at trial, including treble damages, pursuant to
35 U.S.C. § 284 and attorneys’ fees pursuant to 35 U.S.C. § 285. (Compl. ¶¶ 42-43.)
BesTop responds to Webasto’s Complaint with a Motion to Dismiss filed
pursuant to Fed. R. Civ. P. 12(b)(6) in lieu of an Answer. BesTop argues that its
Sunrider product was publicly disclosed prior to Webasto’s March 10, 2015, filing for
the '342 Patent, that it was part of a printed publication, was in public use, had been
provided to a third party in physical form, was offered for sale, and was otherwise
publicly available. BesTop asserts that, as a matter of law, these public disclosures
of its Sunrider product invalidate the '342 Patent under 35 U.S.C. § 102(a)(1), which
reads as follows:
[A] person shall be entitled to a patent unless –
(1) the claimed invention was patented, described in a printed
publication, or in public use, on sale, or otherwise available to the public
before the effective filing date of the claimed invention.
35 U.S.C. § 102(a)(1). Because Webasto claims that the Sunrider infringes the '342
Patent, and because BesTop asserts that the Sunrider was publicly disclosed before
Webasto filed for the '342 Patent, BesTop asserts that the Sunrider is prior art that
necessarily anticipates Webasto’s claimed invention, which is therefore unpatentable
under the established patent maxim: “That which infringes, if later, would anticipate,
if earlier.” Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889) (internal quotation
marks a citation omitted).
BesTop’s motion relies on the Declaration of David A. Smith, a Director of
Engineering at BesTop who has been employed by BesTop since October, 2007.
(ECF No. 11, Def.’s Mot. Ex. C, Dec. 8, 2016 Declaration of David A. Smith.) Smith
testifies that on January 26, 2015, after six months of design, development, and
production of prototypes, he completed preparation of PowerPoint materials which he
presented to Tony Carvello at Fiat Chrysler Automobiles Group (“FCA”) in a meeting
on February 15, 2015, introducing the Sunrider prototype with a Front Folding Panel
(“FPP”). (Smith Decl. ¶¶ 5-7.)
Smith gave Carvello a printed copy of the
PowerPoint materials at the February 15, 2015 meeting and suggested that FCA place
the prototype on one of its vehicles as part of a FCA presentation of Jeep vehicles at
the March, 2015 Moab show. (Id. at ¶¶7, 10.) Carvello later informed Smith that
FCA decided not to show the Sunrider at the March Moab show on the FCA Jeep
vehicles, but told Smith that the MOPAR division within FCA would be working with
BesTop going forward. (Id. ¶ 10.) The Smith Declaration attaches what appear to be
copies of PowerPoint slides depicting a Jeep with a folding top. (Smith Decl. Ex. 1.)
Also attached to the Declaration are copies of several emails from Smith to several
other individuals discussing the PowerPoint presentation and the meeting with
Carvello. (Smith Decl. Ex. 2.)
BesTop asserts that the Smith Declaration demonstrates that the Sunrider was
disclosed to the public (FCA) throughout the period January 26, 2015 through
February 5, 2016, with various presentations and discussions, including provision of
at least one prototype of the Sunrider. BesTop asserts that there is no dispute that this
public disclosure occurred prior to March 10, 2015, the date on which Webasto filed
the patent application for the '342 Patent. (Compl. Ex. A, '342 Patent.) BesTop
asserts that the Sunrider was “part of a printed publication, was in public use, was
provided to a third party in physical form, was offered for sale, and was otherwise
publicly available.” (ECF No. 11, Resp. 6, PgID 72.) BesTop further asserts that the
Sunrider prototype was shown and provided to FCA along with printed materials and
was intended for FCA to include in the March 27, 2015 Moab show on an FCA
vehicle. (Id.) BesTop asserts that Webasto, on the other hand, first disclosed its
Vehicle Roof and Roof Opening Mechanism on March 27, 2015 at the Moab show.
(Id. at 7, PgID 73.) Accordingly, BesTop argues, the '342 Patent cannot be asserted
against the Sunrider, which is prior art against the '342 Patent. (Id.) BesTop moves,
on this basis, to dismiss Plaintiff’s Complaint.
STANDARD OF REVIEW
Federal Rule of Civil Procedure 12(b)(6) provides for the dismissal of a case
where the complaint fails to state a claim upon which relief can be granted. When
reviewing a motion to dismiss under Rule 12(b)(6), a court must “‘construe the
complaint in the light most favorable to the plaintiff, accept its allegations as true, and
draw all reasonable inferences in favor of the plaintiff.’” Handy-Clay v. City of
Memphis, 695 F.3d 531, 538 (6th Cir. 2012) (quoting Directv Inc. v. Treesh, 487 F.3d
471, 476 (6th Cir. 2007)). The court “need not accept as true a legal conclusion
couched as a factual allegation, or an unwarranted factual inference.” Handy-Clay,
695 F.3d at 539 (internal quotation marks and citations omitted). See also Eidson v.
State of Tenn. Dep’t of Children’s Servs., 510 F.3d 631, 634 (6th Cir. 2007)
(“Conclusory allegations or legal conclusions masquerading as factual allegations will
In Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), the Supreme Court
explained that “a plaintiff’s obligation to provide the grounds of his entitle[ment] to
relief requires more than labels and conclusions, and a formulaic recitation of the
elements of a cause of action will not do. Factual allegations must be enough to raise
a right to relief above the speculative level . . . .” Id. at 555 (internal quotation marks
and citations omitted) (alteration in original). “To state a valid claim, a complaint must
contain either direct or inferential allegations respecting all the material elements to
sustain recovery under some viable legal theory.” LULAC v. Bredesen, 500 F.3d 523,
527 (6th Cir. 2007).
The Supreme Court clarified the concept of “plausibilty” in Ashcroft v. Iqbal,
556 U.S. 662 (2009):
To survive a motion to dismiss, a complaint must contain sufficient
factual matter, accepted as true, to “state a claim to relief that is plausible
on its face.” [Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556, 570
(2007)]. A claim has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged. Id. at 556. The plausibility
standard is not akin to a “probability requirement,” but it asks for more
than a sheer possibility that a defendant has acted unlawfully. Ibid.
Where a complaint pleads facts that are “merely consistent with” a
defendant’s liability, it “stops short of the line between possibility and
plausibility of ‘entitlement to relief.’” Id., at 557 (brackets omitted).
Id. at 678.
Thus, “[t]o survive a motion to dismiss, a litigant must allege enough facts to
make it plausible that the defendant bears legal liability. The facts cannot make it
merely possible that the defendant is liable; they must make it plausible. Bare
assertions of legal liability absent some corresponding facts are insufficient to state
a claim.” Agema v. City of Allegan, 826 F.3d 326, 331 (6th Cir. 2016) (citing Ashcroft
v. Iqbal, 556 U.S. 662, 678 (2009)).
In ruling on a motion to dismiss, the Court may consider the complaint as well
as (1) documents that are referenced in the plaintiff’s complaint and that are central
to plaintiff’s claims, (2) matters of which a court may take judicial notice (3)
documents that are a matter of public record, and (4) letters that constitute decisions
of a governmental agency. Thomas v. Noder-Love, 621 F. App’x 825, 830 (6th Cir.
2015) (“Documents outside of the pleadings that may typically be incorporated
without converting the motion to dismiss into a motion for summary judgment are
public records, matters of which a court may take judicial notice, and letter decisions
of governmental agencies.”) (Internal quotation marks and citations omitted);
Armengau v. Cline, 7 F. App’x 336, 344 (6th Cir. 2001) (“We have taken a liberal
view of what matters fall within the pleadings for purposes of Rule 12(b)(6). If
referred to in a complaint and central to the claim, documents attached to a motion to
dismiss form part of the pleadings. . . . [C]ourts may also consider public records,
matters of which a court may take judicial notice, and letter decisions of governmental
agencies.”); Greenberg v. Life Ins. Co. Of Virginia, 177 F.3d 507, 514 (6th Cir. 1999)
(finding that documents attached to a motion to dismiss that are referred to in the
complaint and central to the claim are deemed to form a part of the pleadings). Where
the claims rely on the existence of a written agreement, and plaintiff fails to attach the
written instrument, “the defendant may introduce the pertinent exhibit,” which is then
considered part of the pleadings. QQC, Inc. v. Hewlett-Packard Co., 258 F. Supp. 2d
718, 721 (E.D. Mich. 2003). “Otherwise, a plaintiff with a legally deficient claims
could survive a motion to dismiss simply by failing to attach a dispositive document.”
Weiner v. Klais and Co., Inc., 108 F.3d 86, 89 (6th Cir. 1997).
In this case, BesTop has submitted matters clearly falling outside the category
of documentation that a Court may consider on a motion to dismiss under Fed. R. Civ.
P. 12(b)(6). BesTop submits a Declaration, with attached Exhibits that include slides
from a power point presentation and email correspondence, in support of its motion
to dismiss. None of the matters contained in the Declaration and Exhibits are matters
of public record, nor are they “referenced in and central to” the claims alleged in
Plaintiff’s Complaint. In fact, the materials are relevant only to BesTop’s affirmative
defense of invalidity.
BesTop thus urges the Court to consider the materials that it has submitted in
support of its motion and to convert the motion to dismiss to one for summary
judgment. See Fed. R. Civ. P. 12(d) (“If on a motion under Rule 12(b)(6) or 12(c),
matters outside the pleadings are presented to and not excluded by the court, the
motion must be treated as one for summary judgment under Rule 56. All parties must
be given a reasonable opportunity to present all the material that is pertinent to the
motion.”). If the Court opts to convert the motion to one for summary judgment,
Webasto must be given the opportunity to demonstrate to the Court, via affidavit or
declaration, that it is unable to respond to the motion because it lacks specific facts
that are essential to its opposition to the motion and which it expects to obtain through
discovery. See Fed. R. Civ. P. 56(d) (“If a nonmovant shows by affidavit or
declaration that, for specified reasons, it cannot present facts essential to justify its
opposition, the court may . . . allow time to obtain affidavits or declarations or to take
discovery . . .”). The premature entry of summary judgment can be an abuse an
discretion. “If the non-movant makes a proper and timely showing of a need for
discovery, the district court’s entry of summary judgment without permitting him to
conduct any discovery at all will constitute an abuse of discretion.” Alspaugh v.
McConnell, 643 F.3d 162, 166 (6th Cir. 2011) (internal quotation marks and citation
omitted) (emphasis in original).
However, a court may deny a request for further discovery where the Rule 56(d)
affidavit or declaration “is too vague,” or if the court determines that “further
discovery would not  change the legal and factual deficiencies.” Id. at 167
(internal quotation marks and citations omitted) (alterations added). Any request for
further discovery under Fed. R. Civ. P. 56(d) must be accompanied by either an
affidavit sworn to before a notary or a declaration that complies with the requirements
of 28 U.S.C. § 1746. Sandusky Wellness Center, LLC v. Medco Health Solutions, Inc.,
788 F.3d 218, 226 (6th Cir. 2015) (holding that district court did not abuse its
discretion by denying a motion under Rule 56(d) for additional discovery that was not
supported by a request that was “‘sworn to before a notary public,’” or “‘signed under
penalty of perjury pursuant to 28 U.S.C. § 1746’”) (quoting CareToLive v. Food and
Drug Admin., 631 F.3d 336, 345 (6th Cir. 2011)). Thus, if the requested discovery
is legally irrelevant, or if the request is not adequately specific, or if the request is not
supported by a sworn affidavit or declaration made under penalty of perjury, a court
does not abuse its discretion in refusing to consider the evidence and ruling on the
motion on the evidence submitted by the moving party. Sandusky, 788 F.3d at 22526.
In deciding whether to grant a request for discovery under Rule 56(d), this
Court is guided by decisions of the Sixth Circuit. See Baron Services, Inc. v. Media
Weather Innovations, LLC, 717 F.3d 907, 912 n. 6 (Fed. Cir. 2013) (“We apply the
law of the regional circuit when reviewing the court’s decision under Rule 56(d).”).
If Webasto does adequately demonstrate that it cannot present facts essential to justify
its opposition to the motion, the Court may (1) defer considering the motion or deny
it, (2) allow time to obtain affidavits or declaration or to take discovery; or (3) issue
any other appropriate order. Fed. R. Civ. P. 56(d)(1-3.)
BesTop has filed a motion to dismiss in lieu of filing an Answer to Webasto’s
Complaint of patent infringement. But BesTop does not challenge the sufficiency of
the allegations of Plaintiff’s Complaint under Twombly to plausibly suggest a claim
for patent infringement. Rather, BesTop asks the Court to fast forward past an analysis
of Plaintiff’s claims of infringement and to dismiss the Complaint based upon
BesTop’s asserted defense of invalidity. BesTop concedes that it must rely on matters
outside the pleadings to support its motion to dismiss, specifically relying on the
Smith Declaration. In its Response to Defendant’s motion to dismiss, Webasto
requests that “the motion  be denied pursuant to Rule 56(d), until such time as
Webasto has the opportunity to obtain discovery of facts relevant to BesTop’s motion
. . . .” (ECF No. 14, Resp. 6, PgID 206.) In support of its request under Fed. R. Civ.
P. 56(d) to conduct discovery, Webasto offers the Corrected Declaration of Eric P.
Carnevale, an attorney with the law firm of Lando & Anastasi, LLP, counsel for
Webasto in this action.
(ECF No. 21, May 19, 2017 Declaration of Eric P.
Carnevale.)1 Resolving Webasto’s Rule 56(d) request for discovery requires the Court
Webasto initially submitted the Carnevale Declaration in a form that did not conform
to the requirements of 28 U.S.C. § 1746. (ECF No. No. 15, Jan. 10, 2017 Declaration
of Eric P. Carnevale; ECF No. 20, Order Requiring Submission of Conforming
Declaration.) Webasto has now filed a conforming Carnevale Declaration. (ECF No.
to determine whether the request: (1) is supported by a sworn statement or declaration
that complies with the requirements of 28 U.S.C. § 1746, (2) sufficiently describes the
material facts that Webasto hopes to uncover through the requested discovery, and (3)
demonstrates the legal relevance of the information it seeks to discover. See
Sandusky, 788 F.3d at 225-26.
The Corrected Carnevale Declaration does comply with the requirements of 28
U.S.C. § 1746. Thus, the Court is left to determine whether the Declaration
sufficiently specifies the factual information that Webasto hopes to gain from
discovery, and whether that information if obtained would be relevant to a material
fact in dispute. The Declaration specifically seeks at least the following discovery:
(1) The identity of the individuals who attended the alleged meeting
between BesTop and FCA;
(2) The communications between BesTop and FCA;
(3) The full scope of the subject matter disclosed by BesTop to FCA
during the alleged meeting;
(4) Whether the alleged meeting was accessible to the public, or whether
it was private, secret, or otherwise not publically accessible; and
(5) Any and all facts BesTop may choose to rely on in support of its
unpled allegation of invalidity, and any facts that may refute BesTop’s
unpled allegation of invalidity.
(ECF No. 21, Corrected Carnevale Decl. ¶ 5; ECF No. 14, Pl.’s Resp. 2-3.) Webasto
also seeks the opportunity to depose Mr. Smith, the sole declarant regarding a meeting
that Webasto did not attend, to test his credibility and to authenticate the documents
that he attaches to his Declaration.
To determine the substantive sufficiency of the Carnevale Declaration, the
Court must first consider the legal issues presented by BesTop’s motion in order to
determine whether the discovery that Webasto seeks bears on a fact material to those
issues. BesTop claims that the '342 Patent was anticipated by the Sunrider, which was
publicly disclosed prior to Webasto’s filing application for the '342 Patent on March
10, 2015. This claim involves two separate legal concepts: anticipation and public
use. “Anticipation is a question of fact.” Upsher-Smith Laboratories, Inc. v. Pamlab,
L.L.C., 412 F.3d 1319, 1322 (Fed. Cir. 2005); Brown v. 3M, 265 F.3d 1349, 1350
(Fed. Cir. 2001) (“Anticipation under 35 U.S.C. § 102 means a lack of novelty, and
is a question of fact.”). “To anticipate, every element of every limitation of the
claimed invention must be found in a single prior art reference, arranged as in the
claim.” Id. “Whether a patent is invalid for public use or sale is a question of law
based on underlying facts.” Netscape Communications Corp. v. Konrad, 295 F.3d
1315, 1320 (Fed. Cir. 2002). “A conclusion that a section 102(b) bar invalidates a
patent must be based on clear and convincing evidence.” Id. “The law recognizes that
an inventor may test his invention in public without incurring the public use bar. . . .
. Experimental use negates public use: when proved, it may show that particular acts,
even if apparently public in the colloquial sense, do not constitute a public use within
the meaning of section 102.” Id. (internal quotation marks and citations omitted).
“The experimental use negation is unavailable to a patentee when the evidence
presented does not establish that he was conducting a bona fide experiment.” Id. at
Courts look to the “totality of the circumstances when evaluating whether there
has been a public use,” including consideration of the following:
[T]he nature of the activity that occurred in public; the public access to
and knowledge of the public use; whether there was any confidentiality
obligation imposed on persons who observed the use; whether persons
other than the inventor performed the testing; the number of tests; the
length of the test period in relation to tests of similar devices; and
whether the inventor received payment for the testing.
Netscape, 295 F.3d at 1320. “Section 102(b) may bar patentability by anticipation if
the device used in public includes every limitation of the later claimed invention, or
by obviousness if the differences between the claimed invention and the device used
would have been obvious to one of ordinary skill in the art.” Id. at 1321.
The Court need not analyze the merits of these substantive legal issues as they
pertain to the '342 Patent. At this stage, the Court need only determine whether
Webasto seeks to discover facts that appear to bear directly on these legal issues. The
Court concludes that Webasto’s Rule 56(d) request meets the requirements of
specificity and materiality. Webasto seeks to learn, among other facts, who attended
the meeting between Smith and FCA (the public nature of the meeting), the nature of
the communication (were there any confidentiality restrictions imposed or reasonably
implied), the scope of the information conveyed to FCA (exactly what was disclosed
and whether the disclosure was experimental), whether the meeting was accessible to
the public. BesTop simply asserts in its Reply brief that “there was no disclosure
agreement in place,” see Reply at 3 and 6, but of course this unsworn attorney
statement carries no evidentiary weight. BesTop also asserts that FCA was given the
right to show the Sunrider at the Moab show and that the Moab show was a public
show. (Reply at 3.) But it is undisputed that the Sunrider was not presented at the
Moab show and Webasto seeks to discover the details of the conversation between
Smith and Carvello regarding an alleged display of the Sunrider at the Moab show.
BesTop’s unsupported attorney assertion in its Reply Brief that there was “an express
agreement for FCA to take Defendant’s product to the Moab show in March 2015,”
see Reply at 4, carries no evidentiary weight.
The burden will be on BesTop to prove its invalidity defense by clear and
convincing evidence. From Webasto’s perspective, the issue of public use is simply
not as straightforward as BesTop would have the Court believe and the Court agrees
that BesTop’s proffer does not satisfy its clear and convincing evidentiary burden.
Webasto asserts that based on the facts asserted in the Smith Declaration, the alleged
meeting between Smith and FCA was nothing more than a private confidential
meeting and cannot qualify as a public use. Webasto asserts that the emails suggest
that this was a private meeting between two individuals to discuss a concept –
something typically accompanied by an understanding of confidentiality. Webasto
asserts that a formal confidentiality agreement is not required, that an understanding
of confidentiality can be implied from the circumstances of the alleged disclosure,
about which at this point we know only what BesTop has chosen to tell us. Webasto
also asserts Smith’s statement in an email to Carvello that BesTop will continue
“testing” the prototype “if it turned into an OEM project,” suggests that the prototype
was experimental. (Pl.’s Resp. 12-13.) As counsel for Webasto pointed out at the
hearing on BesTop’s motion, it is not clear exactly what BesTop disclosed to FCA.
Webasto is entitled to the opportunity to discover this and other relevant facts before
being foreclosed from proceeding with its infringement claims. Counsel for BesTop
asserted at the hearing that if the Court denies its motion, we will simply be back here
in six to eight months arguing the same facts the parties are arguing now. That may
be true, but Webasto has sufficiently demonstrated through its Rule 56(d) Declaration
that it is entitled to discovery and an opportunity to convince the Court otherwise.
There are ethical constraints, and mechanisms to enforce those constraints, that will
inform Plaintiff’s conduct in the event that the invalidity of Webasto’s claims
becomes undeniable in the course of discovery.
The Court converts BesTop’s motion to one for summary judgment under Rule
12(d) and concludes that the Rule 56(d) discovery Webasto seeks is directed to
uncover specific facts that are relevant to the legal issues presented in BesTop’s
motion – whether there was a public disclosure and if so what was disclosed, whether
it was without confidentiality restrictions, and whether the use was merely
experimental. See Honeywell Int’l Inc. v. Universal Avionics Sys. Corp., 488 F.3d
982, 998 (Fed. Cir. 2007) (“A barring public use requires a public use more than one
year before the patent filing date that employs a completed invention in public,
without confidentiality restrictions, and without permitted experimentation.”) These
are facts that are uniquely available and known to BesTop and not to Webasto.
Additionally, Webasto asserts that it is entitled to depose Smith and to test his
credibility. Metropolitan Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330,
1336-38 (Fed. Cir. 2008) (holding that district court erred in denying plaintiff’s Rule
56 motion for discovery and should not have treated the defendant’s witnesses’
declarations as truthful but “should have allowed Bancorp a reasonable opportunity
for discovery concerning the accused components of the Vantage system”). Finally,
Webasto raises legitimate concerns regarding the authenticity of the PowerPoint
photocopies attached to Smith’s Declaration, in particular regarding whether these
slides were in fact presented at the meeting with FCA. Webasto proposes to examine
Smith on these exhibits.
For the foregoing reasons, the Court DENIES BesTop’s Motion, converted to
a motion for Summary Judgment under Rule 12(d), and ORDERS BesTop to file an
Answer to Webasto’s Complaint on or before June 8, 2017, following which the Court
will issue its standard Notice of Scheduling Conference. The Court declines BesTop’s
request that discovery be “staged.” Counsel should commence the discovery process
immediately and not wait for the scheduling conference to take place and the
Scheduling Order to be finalized.
IT IS SO ORDERED.
s/Paul D. Borman
PAUL D. BORMAN
UNITED STATES DISTRICT JUDGE
Dated: May 25, 2017
CERTIFICATE OF SERVICE
The undersigned certifies that a copy of the foregoing order was served upon each
attorney or party of record herein by electronic means or first class U.S. mail on May
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