John Mezzalingua Associates, Inc v. Corning Gilbert Inc.

Filing 76

SUMMARY ORDER - That PPC's 49 Motion for Partial Summary Judgment is DENIED as premature. Signed by Chief Judge Gary L. Sharpe on 12/11/2012. (jel, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF NEW YORK
________________________________
PPC BROADBAND, INC.,
d/b/a PPC,
Plaintiff,

5:11-cv-761
(GLS/DEP)

v.
CORNING GILBERT INC.,
Defendant.
________________________________
APPEARANCES:
OF COUNSEL:
FOR THE PLAINTIFF:
Hiscock, Barclay Law Firm
Syracuse Office
One Park Place
300 South State Street
Syracuse, NY 13202-2078

DOUGLAS J. NASH, ESQ.
GABRIEL M. NUGENT, ESQ.
JOHN D. COOK, ESQ.
JASON C. HALPIN, ESQ.

FOR THE DEFENDANT:
Harter, Secrest Law Firm
Rochester Office
1600 Bausch & Lomb Place
Rochester, NY 14604-2711

DAVID M. LASCELL, ESQ.
ERIKA N.D. STANAT, ESQ.
JERAULD E. BRYDGES, ESQ.

DLA Piper LLP
DC Office
500 Eighth Avenue NW
Washington, DC 22004

JOSEPH P. LAVELLE, ESQ.
ANDREW N. STEIN, ESQ.

Gary L. Sharpe
Chief Judge
SUMMARY ORDER

Plaintiff PPC Broadband, Inc., doing business as PPC, commenced
this action against defendant Corning Gilbert Inc. for alleged infringement
of two of PPC’s coaxial cable connector patents. (See Compl., Dkt. No. 1.)
Pending is PPC’s motion for partial summary judgment. (See Dkt. No. 49.)
For the reasons that follow, the motion is denied as premature.
In short, PPC’s motion asserts that Corning Gilbert should be
collaterally estopped from challenging the validity of the ’194 Patent
because, among other reasons, it unsuccessfully did so in previous
litigation between the parties. (See generally Dkt. No. 49, Attach. 24.)
Corning Gilbert does not deny this assertion; instead, it argues that the
prevailing consideration of judicial efficiency will not be served by applying
collateral estoppel based on the relation between PPC’s patents. (See Dkt.
No. 56 at 6-8); see also S.E.C. v. Monarch Funding Corp., 192 F.3d 295,
304 (2d Cir. 1999) (“When the efficiency rationale for collateral estoppel
fails, however, courts have understandably declined to apply the
doctrine.”).
At this juncture, Corning’s Gilbert’s argument, particularly with
respect to the streamlining of discovery, is persuasive. (See Dkt. No. 56 at
7.) Since this is a case of “offensive collateral estoppel,” Monarch Funding
2

Corp., 192 F.3d at 303, and the ’194 and ’940 Patents “are ‘not patently
distinct,’” (Dkt. No. 60 at 2), PPC’s motion could unfairly hinder Corning
Gilbert’s right to challenge the validity of the ’940 Patent, which was not
included in the prior litigation, (see id. at 1-2). Indeed, PPC admitted as
much in its reply when it noted that a decision in its favor would “eliminate[]
validity as an issue.” (Id. at 2.) As this case is in the early stages of
discovery, a decision of this importance is premature. However, this by no
means forecloses PPC from reasserting collateral estoppel at a later stage
of the proceedings. Thus, because it would be unjust and inefficient to
apply collateral estoppel at this juncture, PPC’s motion for partial summary
judgment is denied as premature.
ACCORDINGLY, it is hereby
ORDERED that PPC’s motion for partial summary judgment (Dkt. No.
49) is DENIED as premature; and it is further
ORDERED that the Clerk provide a copy of this Summary Order to
the parties.
IT IS SO ORDERED.
December 11, 2012
Albany, New York

3