Script Security Solutions, L.L.C. v. Amazon.com, Inc. et al
MEMORANDUM OPINION AND ORDER. Signed by Judge William C. Bryson on 10/11/2016. (nkl, )
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
SCRIPT SECURITY SOLUTIONS LLC,
AMAZON.COM INC., ET AL.,
Case No. 2:15-CV-1030-WCB
MEMORANDUM OPINION AND ORDER
Before the Court are Protection One’s Unopposed Motion to Withdraw Its Motion for
Summary Judgment of Invalidity, Dkt. No. 237, Defendant Protection One Alarm Monitoring
Inc.’s Emergency Motion to File a Motion for Summary Judgment Out of Time and for
Expedited Briefing, Dkt. No. 238, and Defendant’s Motion for Partial Summary Judgment of
Invalidity of the Asserted Claims of the ’909 Patent, Dkt. No. 239. The motion to withdraw the
motion for summary judgment of invalidity is GRANTED. The emergency motion to file a
motion for summary judgment out of time and for expedited briefing is DENIED. The motion
for partial summary judgment of invalidity of the asserted claims of the ’909 patent is DENIED
On September 22, 2016, defendant Protection One Alarm Monitoring, Inc., (“Protection
One”) filed a motion for summary judgment of invalidity with respect to the asserted claims of
U.S. Patent No. 6,542,078 (“the ’078 patent”), one of the three patents being asserted in this case
by plaintiff Script Security Solutions, LLC (“Script”). Dkt. No. 222. Protection One at that time
also filed a motion for summary judgment of non-infringement, Dkt. No. 223; a motion for
summary judgment on its affirmative defenses of license and patent exhaustion applicable to all
three patents, Dkt. No. 221; as well as motions to strike portions of the reports of Script’s
experts, Dkt. Nos. 220, 227, and to exclude the testimony of those experts, Dkt. No. 228.
Protection One did not at that time file a motion for summary judgment of invalidity as to the
other two patents at issue in the case.
On October 7, 2016, before the deadline for filing its opposition to the motion for
summary judgment of invalidity as to the ’078 patent, Script filed an unopposed motion to
dismiss its claims under that patent. Dkt. No. 235. The Court has today granted that motion.
In response to Script’s motion to dismiss its claims under the ’078 patent, Protection One
filed the present emergency motion to permit it to file a motion for summary judgment regarding
one of the other patents asserted by Script, U.S. Patent No. 6,828,909 (“the ’909 patent”). Along
with that motion, Protection One filed the summary judgment motion that it sought leave to file,
and it proposed an expedited briefing schedule for the response, reply, and surreply regarding
that motion. Although Protection One recognized that the motion for summary judgment as to
the ’909 patent was untimely, it argued that the belated filing of the motion should be permitted
because (1) Script’s withdrawal of the ’078 patent claims “has wasted [Protection One’s] time
and resources that could have been devoted elsewhere,” and (2) it has “prevented [Protection
One] from moving for summary judgment on issues Script actually intends to present at trial.”
Dkt. No. 238, at 1-2. To offset what it terms “the prejudice caused by Script’s delayed dismissal
of the ’078 patent,” id. at 2, Protection One seeks to substitute its motion for summary judgment
of invalidity of the ’909 patent for its now-mooted motion for summary judgment of invalidity of
the ’078 patent.
Protection One argues that it initially decided to file a motion for summary judgment as
to the ’078 patent “because Script’s allegation of infringement as to that patent was the most
egregious.” Dkt. No. 238, at 3. Given the 60-page limit on a party’s summary judgment motions
imposed by E.D. Tex. Local Rule CV-7(3)(A), and “based on the information it had at the time,”
Protection One argues that it “decided to prioritize the ’078 patent” and therefore did not seek
summary judgment at that time on the ’909 patent. Protection One further asserts that “[w]ithout
knowing Script’s intent to drop the ’078 patent any earlier, [Protection One] could not have filed
the motion for summary judgment on the ’909 patent in accordance with the Local Rules.” Id.
Protection One further argues that granting the motion for summary judgment as to the ’909
patent would significantly simplify the case and that the expedited briefing schedule would not
be prejudicial to Script because Script has already been given notice of Protection One’s position
that the ’909 patent claims are invalid. Id. at 3-4.
Script opposes the emergency motion to permit the untimely filing of the motion for
summary judgment of invalidity of the ’909 patent. Dkt. No. 243. Among other grounds, Script
argues that the new summary judgment motion raises arguments that were not set forth in
Protection One’s letter brief seeking leave to file the motion or in its invalidity contentions. Id.
at 1-3. Script also contends that it would be prejudiced by being required to respond to an outof-time motion for summary judgment at a time of intensive briefing of other pretrial motions
and active trial preparation, particularly in light of the expedited briefing schedule proposed by
Protection One. Id. at 3-4.
The Court agrees with Script that Protection One has not provided a sufficient
justification for its untimely motion for summary judgment as to the ’909 patent. Protection One
provides no adequate reason that the motion could not have been filed on a timely basis. As to
Protection One’s contention that it could not have filed the motion at the time dispositive
motions were due because it was running up against the 60-page limit in the local rules for all of
a party’s summary judgment motions, the Court notes the following:
First, if a party believes it is entitled to summary judgment on multiple grounds, it can
allocate the available pages of argument over multiple motions. The 60-page limit is not so
parsimonious as to prevent a party from raising those issues that it believes should be raised on
summary judgment. That is particularly true in light of the proviso that attachments to the
motions are not counted against the page limitation. The Court has reviewed the summary
judgment motions filed by Protection One along with the new summary judgment motion and
has concluded that, with careful editing, the motions could all have been presented to the Court,
without loss of force, within the 60-page limit.
Second, if a party considers the number of pages allowed by the local rules to be
insufficient to make the summary judgment arguments that a party believes need to be brought to
the Court’s attention, the party could seek additional pages prior to the deadline for filing
summary judgment motions. The Court may view such motions with skepticism, but on a
sufficient showing, relief from the 60-page limitation is available if a party believes an issue is
important and cannot be clearly presented to the Court within the page limitation. Protection
One did not choose that option, but chose instead to decline to file its motion for summary
judgment as to the ’909 patent at the time it was due. In light of that decision, Protection One’s
current contention that the motion is highly important to the disposition of the case loses much of
As to Protection One’s argument regarding prejudice, the Court is not persuaded by its
suggestion that Script was somehow at fault for pleading infringement of the’078 patent claims
and then withdrawing those claims after Protection One filed its summary judgment motion.
Protection One is certainly no worse off than it would have been if Script had maintained its ’078
patent claims through the summary judgment process. By withdrawing those claims, Script has
saved Protection One the burden of filing a response and surreply, and it has saved the Court the
burden of deciding that summary judgment issue. The Court is not persuaded that Script’s
conduct in this regard was improper, and the Court discerns no prejudice to Protection One from
Script’s actions in withdrawing the ’078 patent claims when it did. Protection One’s suggestion
that the presence of the ’078 patent claims led it to focus on that patent rather than on the ’909
patent is not a convincing argument regarding prejudice. The ’909 patent claims did not become
any weaker after the ’078 claims were withdrawn. If Protection One believed those claims were
vulnerable to summary judgment at the time the summary judgment motions were due, as it does
now, it should have sought summary judgment then. Nothing kept it from doing so. It is now
stuck with the consequences of its own tactical decision not to seek summary judgment as to that
Significantly, this is not to say that the issue of the validity of the ’909 patent claims is
out of the case. It is simply not one of the issues that was timely submitted for the Court’s ruling
on dispositive motions, and the Court sees no justification for waiving the deadline for filing
such a motion in this instance.
IT IS SO ORDERED.
SIGNED this 11th day of October, 2016.
WILLIAM C. BRYSON
UNITED STATES CIRCUIT JUDGE
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