Ball Metal Beverage Container Corporation v. Crown Packaging Technology, Inc. et al

Filing 181

ENTRY AND ORDER REOPENING THE RECORD FOR LIMITED DISCOVERY ON ISSUE OF WHAT, IF ANY, MATERIAL DIFFERENCE IN ANGLE RANGE OUTCOME EXISTS AMONG DIFFERENT METHODOLOGIES; PARTIES TO SUBMIT A SCHEDULING ORDER OF DATES TO COMPLETER LIMITED DISCOVERY AND RE=BRIEFING OF MOTION FOR SUMMARY JUDGMENT ON THE ISSUE OF INVALIDITY OF U.S. PATENT NO. 6,848,875 AND U.S. PATENT NO. 6,935,826 FOR INDEFINITENESS BY THE CLOSE OF BUSINESS ON SEPTEMBER 10, 2021. Signed by Judge Walter H. Rice on 8/24/2021. (srb)

Case: 3:12-cv-00033-WHR Doc #: 181 Filed: 08/25/21 Page: 1 of 8 PAGEID #: 10461

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION
BALL METAL BEVERAGE
CONTAINER CORP.,
Plaintiff/Counterclaim Defendant,
vs.

CROWN PACKAGING TECHNOLOGY,
INC. AND CROWN CORK & SEAL USA, INC.,:

Case No. 3: 12-cv-033
JUDGE WALTER H. RICE

Defendant/Counterclaim Plaintiffs,
vs.
REXAM BEVERAGE CAN COMPANY,
Co u nte re Iaim/Defendant.

ENTRY AND ORDER REOPENING THE RECORD FOR LIMITED DISCOVERY ON
ISSUE OF WHAT, IF ANY, MATERIAL DIFFERENCE IN ANGLE RANGE
OUTCOME EXISTS AMONG DIFFERENT METHODOLOGIES; PARTIES TO
SUBMIT A SCHEDULING ORDER OF DATES TO COMPLETE LIMITED
DISCOVERY AND RE-BRIEFING OF MOTION FOR SUMMARY JUDGMENT ON
THE ISSUE OF INVALIDITY OF U.S. PATENT NO. 6,848,875 AND U.S. PATENT
NO. 6,935,826 FOR INDEFINITENESS BY THE CLOSE OF BUSINESS ON
SEPTEMBER 10, 2021

On July 22, 2019, the Court refiled its June 27, 2019, Sealed Decision and
Entry which, inter alia, sustained Plaintiff/Counterclaim Defendant, Ball Metal
Beverage Container Corporation's ("Ball") and Counterclaim Defendant, Rexam
Beverage Can Company's ("Rexam") motion for summary judgment on validity,

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Doc. #88. The Decision and Entry found that the asserted claims of the U.S. Patent
No. 6,848,875 ('875) and U.S. Patent No. 6,935,826 ('826) were invalid for
indefiniteness pursuant to 35 U.S.C. § 112. Doc. #162. On September 25, 2019, the
Court entered judgment in favor of Ball and Rexam and against Counterclaim
Plaintiffs, Crown Packaging Technology, Inc. and Crown Cork & Seal USA, Inc.
("Crown"), on Ball's complaint for declaratory judgment on validity, Doc. #1, and
against Crown on its infringement counterclaims against Ball and Rexam . Doc.
#166. Crown then appealed to the United States Court of Appeals for the Federal
Circuit on the Court's finding of invalidity due to indefiniteness.
On December 31, 2020, the Federal Circuit vacated the Court's decision
granting summary judgment to Ball and Rexam and remanded " for further
proceedings consistent with this opinion." Doc. #174, PagelD#10408. The
appellate court stated that this Court's analysis of indefiniteness was
" incomplete," since it did not "establish in any meaningful way what material
difference in angle range outcome, if any, exists among Mr. Higham's1 different
methodologies." Id It further stated that "[W]e emphasize that on remand the
district court should review Mr. Higham's methodologies and analyze whether the
methods lead to materially different results for the angle." Id.
Following issuance of the appellate decision, the parties filed separate
statements concerning how the case should proceed on remand. Doc. ##177-1

1

Martin Higham is Crown' s primary li ability ex pert. Doc. #177-2, PageID#10429.

2

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and 177-2. On March 24, 2021, a status conference was held and a briefing
schedule set requiring the parties to file simultaneous replies to each other's
statements. Replies were filed by Ball and Rexam, Doc. #179, and Crown. Doc.
#180. The issue is ripe for decision.

I. Summary of the Parties' Statements of Proceedings on Remand
A. Summary of Ball and Rexam's Statements (Doc. ##177-1 and 179)

Ball and Rexam (collectively "Ball") argue that the decision of the Federal
Circuit requires this Court to address only one remaining question: what material
difference in angle range outcome, if any, exists among Mr. Higham's different
methodologies. It contends that answering this question, which it asserts is "new
and has not been specifically required under prior Federal Circuit precedent," Doc.
#179, PagelD#10441, is all that is necessary. This is so, it argues, since "[T]he
Court of Appeals found no error in this Court's findings that Mr. Higham has been
inconsistent in explaining how one would locate the second point, that he has
used at least three different tests to do it[,] and that these tests can lead to
different locations for the second point." Id., PagelD#10435 (citing Doc. #174,
PagelD#10404-05). Ball asserts that if the Court answers this question and finds
that a "material difference in angle range outcome" exists and that the claims are
indefinite, the outstanding motions are moot, no trial is necessary and judicial
economy is served. Because the language in the appellate decision only instructs
the Court to conduct "further proceedings consistent with this opinion,"
3

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Doc.# 174, PagelD#10408, Ball argues that the Court has discretion as to how to
proceed. It proposes that further proceedings should consist of supplementing
the record to address the "materiality question" raised by the Federal Circuit, and
states that it will do this by submitting "a limited number of exemplary can ends"
and with a "limited declaration" from their expert2 "concerning these [can] ends."
Doc. #179, PagelD#10443. It asserts that because of the limited scope of the
materiality question that needs addressed, no discovery and no evidentiary
hearing is required. If, however, following Ball's supplementation of the record,
Crown believes it needs discovery before filing a responsive memorandum, Ball
states that Crown can file a motion pursuant to Fed. R. Civ. P. 56(d). 3 Id.,
Pagel D#10444.

B. Summary of Crown's Statements (Doc. ##177-2 and 180)

Crown asserts that pursuant to the Federal Circuit's decision and the
Seventh Amendment to the United States Constitution, it is entitled to a jury trial
which it requested on all issues arising under its counterclaims. Doc. #56, PagelD
#5839. Accordingly, it argues that no additional discovery is warranted and Ball

2

Ball's expert witness is Edmund Gillest. Doc. #179, PageID#10438.

Federal Rule of Civil Procedure 56(d) provides that where, on a motion for summary
judgment, "a nonmovant shows by affidavit or declaration that, for specified reasons, it
cannot present facts essential to justify its opposition," the district court may defer
consideration of the motion or deny it; allow time to pursue affidavits, declarations, or
discovery; or "issue any other appropriate order. " Fed. R. Civ. P. 56(d).

3

4

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should not be permitted to delay this trial further by filing a third motion for
summary judgment. 4 It contends that the materiality issue concerning the angle
range outcome was required under pre-existing indefiniteness case law and that
Ball had the opportunity to present such evidence to this Court and the appellate
court but failed to do so. Moreover, Crown contends that if Ball is permitted to file
another motion for summary judgment on the issue of indefiniteness, "key
disputed" factual issues exist in the materiality issue that "will play out through
expert testimony."

This, it argues, will result in Ball's motion for summary

judgment being overruled and the case ending up before a jury for trial. Doc.
#180, PagelD#10453. Accordingly, Crown argues that reopening the record and
giving Ball another opportunity to file a motion for summary judgment on the
issue of indefiniteness is a "wasteful expenditure of resources." Doc. #180,
PagelD#10456. Although it maintains, for the reasons set forth above, that a jury5
trial is the only way that this case should proceed following the Federal Circuit's
remand , if the record is reopened on the issue of indefiniteness, Ball's proposal of
allowing it to submit a supplemental declaration from its expert witness should be
rejected, since the expert's out of court statements would not be subject to cross-

4

Crown argues that Ball has already been given a second chance to file a motion for
summary judgment on the issue of indefiniteness because of how the Supreme Court
changed the law in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,901 (2014) ..
5

Although Crown argues that it is entitled to a jury trial for all issues, including that of
indefiniteness, it further contends that if the Court overrules Crown and tries the issue of
indefiniteness to the Court, then this bench trial must be held after the jury trial. Doc.
#180, PageID#10458.

5

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examination. Instead, Crown proposes limited discovery: Ball's expert would
serve a supplemental expert report and Crown would have the opportunity to
depose the expert concerning this report. Following this deposition, Crown would
be given leave to serve a responsive expert report. Id., PageID#10457. At the
conclusion of this limited discovery, the case could be ready for trial or, if
permitted by the Court and contrary to Crown's position, Ball could file its third
motion for summary judgment on the issue of invalidity due to definiteness. Id.

II. Legal Analysis
In determining whether to reopen the record after a remand, the Sixth
Circuit has stated that the decision of the district court will not be disturbed absent
an abuse of discretion. Yashon v. Gregory, 737 F.2d 547, 556 (6th Cir. 1984) (court
abused its discretion in a sua sponte grant of summary judgment for defendant,
following remand, by not giving notice to plaintiff and not reopening the record
pursuant to plaintiff's motions for continuance and further discovery); State
Industries, Inc. v. Mor-Flo Industries, Inc., 948 F.2d 1573, 1577 (Fed. Cir. 1991)
(citing Adelson v. United States, 782 F.2d 1010, 1012 (Fed. Cir. 1986). ("Absent
contrary instructions, a remand for reconsideration leaves the precise manner of
reconsideration-whether on the existing record or with additional testimony or
other evidence-to the sound discretion of the trial court. " ). Here, the Federal
Circuit Court vacated and remanded this Court's decision "due to an incomplete
analysis" of indefiniteness. Doc. #174, PageID#10408. It held that the analysis
6

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"did not establish in any meaningful way what material difference in angle range
outcome, if any, exists among Mr. Higham's different methodologies." Id The
appellate court did not order that this Court reopen the case nor instruct that the
case immediately proceed to trial. Instead, pursuant to the previously cited case
law, further proceedings following remand are left to the discretion of this Court.
Although the parties disagree whether the Federal Circuit's decision creates
new law or cites pre-existing law on invalidity due to indefiniteness, it is clear
from the decision that to establish invalidity due to indefiniteness, there must be a
showing of a material difference in angle range outcome among Mr. Higham's
different methodologies. Although both Ball and Crown argue that their
respective approaches concerning how this case should proceed do not require
additional discovery, neither of their expert witnesses has previously addressed
the materiality issue. As explained by the Federal Circuit, "[T]he relevant inquiry
is ... whether the different methodologies used to identify the second point yield
materially different angle ranges[,] because the purpose of the claimed second
point is simply for defining the angle, and it is ultimately the claimed angle range,
not the location of the second point itself[,] that matters for determining the scope
of the claim and whether an accused product infringes it." Id, PageID#10408.
Accordingly, the Court finds that to minimize further delay and conserve
judicial resources, whether for purposes of filing a motion for summary judgment
on invalidity due to lack of definiteness or for trial, the Court will reopen the
record to permit the parties to engage in additional limited discovery on the issue
7

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of what, if any, material difference in angle range outcome exists among the
different methodologies advanced by Crown's expert, Mr. Higham.
Counsel for Ball and Crown are to submit a proposed Scheduling Order
including the following dates: (1) the date for Ball to serve a supplemental report
of its expert witness to Crown; (2) the date for Crown to conclude any deposition
of Ball's expert witness concerning his supplemental report; (3) the date for Crown
to serve a responsive expert report to Ball; (4) the date for Ball to conclude any
deposition of Crown's expert witness concerning his report; and (5) the date for
Ball to file a motion for summary judgment on the issue of invalidity of U.S.
Patent No. 848,875 and U.S. Patent No. 6,935,826 for indefiniteness.
The Scheduling Order will be filed by the close of business on September
10,2021.

AUGUST 24, 2021

WALTER H. RICE
UNITED STATES DISTRICT JUDGE

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