Phil-Insul Corp. v. Reward Wall Systems, Inc. et al

Filing 192

ORDER - IT IS ORDERED: Plaintiff's Motion Pursuant to Fed. R. Civ. P. 56(d) to Permit Integraspec to Obtain Evidence in Response to the Polyform Defendants' Motion for Summary Judgment of Non-Infringement (filing 172 ) is granted. Jean Louis Beliveau shall appear for deposition by or before October 12, 2012. Plaintiff shall respond to the Polyform Defendants' motion for summary judgment (filing 169 ) within fourteen days of the completion of Beliveau's deposition. The Polyform Defendants' Motion for Protective Order (filing 175 ) is denied. Ordered by Magistrate Judge F.A. Gossett. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PHIL-INSUL CORP.,
Plaintiff,
V.
REWARD WALL SYSTEMS, INC.,
BUILDBLOCK BUILDING
SYSTEMS, LLC, NUDURA
CORPORATION, POLYFORM,
A.G.P., Inc., and AMVIC
CORPORATION,
Defendants.

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8:12CV91

ORDER

This case involves a charge of infringement of United States Patent No. 5,428,933 (the
“933 patent”) against multiple defendants, including Polyform, A.G.P., Inc. and Nudura
Corporation (collectively referred to herein as the “Polyform Defendants”). On July 19,
2012, this court entered its Memorandum and Order Re: Claim Construction. (Filing 168.)
On August 3, 2012, the Polyform Defendants filed a motion for summary judgment, arguing
that there has been no infringement of the patent both literally and under the doctrine of
equivalents (“DOE”).1 (Filing 169.) The Polyform Defendants maintain that summary
judgment is warranted because Plaintiff is barred from invoking the DOE by claim vitiation 2

1

Under the doctrine of equivalents, “a product or process that does not literally
infringe upon the express terms of a patent claim may nonetheless be found to infringe if
there is ‘equivalence’ between the elements of the accused product or process and the
claimed elements of the patented invention.” Warner-Jenkins Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 21 (1997).
2

“Claim vitiation applies when there is a clear, substantial difference or a difference
in kind between the claim limitation and the accused product.” Trading Techs. Int’l, Inc. v.
eSpeed, Inc., 595 F.3d 1340, 1355 (Fed. Cir. 2010) (quotation and citation omitted).

and prosecution history estoppel.3
On August 14, 2012, Plaintiff filed a motion pursuant to Fed. R. Civ. P. 56(d)
requesting that it be permitted to depose Jean Louis Beliveau (“Beliveau”), the ownerexecutive of the Polyform Defendants, before responding to the Polyform Defendants’
summary judgment motion. (Filing 172.) Plaintiff claims that additional evidence, specific
to the factors to be considered in a DOE analysis, is required before it can fully respond to
the summary judgment motion and that this evidence may be obtained by deposing Beliveau.
In response, the Polyform Defendants moved for a protective order, seeking to
preclude Plaintiff from deposing Beliveau.4 (Filing 175.) They contend that because
information from Beliveau would simply be directed to an attempt by Plaintiff to argue that
the relevant products infringe under the DOE, there is no legitimate reason to take Beliveau’s
deposition. The Polyform Defendants claim that the DOE is not available to Plaintiff as a
matter of law under prosecution history estoppel and claim vitiation and, therefore, no
additional facts are necessary for the court to rule on the summary judgment motion. They
further argue that because Beliveau, who lives in Montreal, Quebec, is unavailable for
deposition until late September, postponing a ruling on the motion for summary judgment
until Beliveau can be deposed would cause undue delay. In an apparent attempt to resolve
this dispute, the Polyform Defendants offered an alternate witness for deposition. Plaintiff
rejected this offer, maintaining that the proposed witness does not have the specialized
knowledge that Beliveau possesses.
ANALYSIS
Under Fed. R. Civ. P. 56(d), the court may defer ruling on a motion for summary
judgment if the party opposing the motion shows by affidavit that, for specified reasons, it

3

Prosecution history estoppel limits “the doctrine of equivalents when the applicant
makes a narrowing amendment for purposes of patentability, or clearly and unmistakably
surrenders subject matter by arguments made to the examiner.” Salazar v. Procter & Gamble
Co., 414 F.3d 1342, 1344 (Fed. Cir. 2005) (citation omitted).
4

The Polyform Defendants do not object to Plaintiff deposing Beliveau, if necessary,
following the resolution of the motion for summary judgment.
2

cannot present facts essential to justify its opposition. Fed. R. Civ. P. 56(d). The purpose
of Rule 56(d) “is to provide an additional safeguard against an improvident or premature
grant of summary judgment.” U.S. ex. rel. Bernard Casino Magic Corp., 293 F.3d 419, 426
(8th Cir. 2002) (quotation and citation omitted). “Although Rule 56(d) is not a shield that
can be raised to block a motion for summary judgment without even the slightest showing
by the opposing party that his opposition is meritorious, it should be applied with a spirit of
liberality.” Jacobs v. PT Holdings, Inc., No. 8:11CV106, 2012 WL 705772, *2 (D. Neb.
Mar. 2, 2012) (internal citations and quotations omitted).
In order to request discovery under this rule, “a party must file an affidavit describing:
(1) what facts are sought and how they are to be obtained; (2) how these facts are reasonably
expected to raise a genuine issue of material fact; (3) what efforts the affiant has made to
obtain them; and (4) why the affiant’s efforts were unsuccessful.” Ojeda v. Scottsbluff, No.
4:08CV3067, 2009 WL 2990019, *1 (D. Neb. Sept. 16, 2009). In support of its motion,
Plaintiff submitted the declaration of its attorney, Paul Adams (“Adams”). (Filing 174.)
Adams claims that in order to show that the motion for non-infringement based on the DOE
is improvident, Plaintiff needs technical testimony from a qualified witness. According to
Adams, Beliveau is the person most qualified to provide this information. Adams avers that
Beliveau is the designer of the allegedly infringing product and that Beliveau is deeply
familiar with Plaintiff’s product because his company manufactured it for several years.
Adams contends that due to Beliveau’s familiarity with both products at issue, he is best
suited to provide information with respect to “equivalence.”
I find that Plaintiff has complied with the requirements of Fed. R. Civ. P. 56(d) and
will permit the requested deposition. I am persuaded that the additional discovery sought
may be relevant to the issues presented in the summary judgment motion, particularly
whether claim vitiation bars Plaintiff’s DOE claim.

The DOE “permits a finding of

infringement, despite the missing limitation, because the deficit is not substantial.” Nystrom
v. Trex Co., 580 F.3d 1281, 1287 (Fed. Cir. 2009) (Rader, J., additional views). However,
claim vitiation “bars infringement because the same deficit is substantial.” Id. “In other
words, claim vitiation . . . simply rewinds and replays the doctrine of equivalents test for
substantiality of a missing claim limitation.” Id. Therefore, “a finding of insubstantial
difference to show equivalency obviates any further vitiation analysis–the wholly
insignificant equivalent, by definition, would not vitiate the claim. On the other hand, a
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finding of substantial difference renders vitiation unnecessary.” Id. Additional discovery
may allow the court to consider the totality of the circumstances when considering the
motion for summary judgment.
Moreover, I conclude that there is little harm in allowing the deposition to proceed.
The requested deposition can be completed within a reasonably brief period of time, such that
disposition of the Polyform Defendants’ summary judgment motion will not be unreasonably
delayed. Therefore, keeping the spirit of liberality in mind, I will permit the requested
deposition to go forward, within the confines set forth below. The Polyform Defendants’
Motion for Protective Order (filing 175) will therefore be denied.
IT IS ORDERED:
1.

Plaintiff’s Motion Pursuant to Fed. R. Civ. P. 56(d) to Permit Integraspec to
Obtain Evidence in Response to the Polyform Defendants’ Motion for
Summary Judgment of Non-Infringement (filing 172) is granted.

2.

Jean Louis Beliveau shall appear for deposition by or before October 12, 2012.
Plaintiff shall respond to the Polyform Defendants’ motion for summary
judgment (filing 169) within fourteen days of the completion of Beliveau’s
deposition.

3.

The Polyform Defendants’ Motion for Protective Order (filing 175) is denied.

DATED September 11, 2012.
BY THE COURT:
S/ F.A. Gossett
United States Magistrate Judge

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