Columbia Machine Inc v. Besser Company

Filing 29

ORDER granting 15 Motion for Continuance; 10 MOTION for Partial Summary Judgment of Patent Infringement is renoted for 9/30/2011, signed by Judge Ronald B. Leighton.(DN)

HONORABLE RONALD B. LEIGHTON

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UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF WASHINGTON
AT TACOMA

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COLUMBIA MACHINE, INC., a Washington
corporation,

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Case No. CV11-05268

Plaintiff,

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v.
BESSER COMPANY, a Michigan corporation,
Defendant.

ORDER ON PLAINTIFF’S MOTION
FOR PARTIAL SUMMARY
JUDGMENT
[Dkt. #s 10 & 15]

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I. INTRODUCTION
This patent dispute comes before the Court upon Plaintiff’s Motion for Partial Summary

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Judgment. [Dkt. #10], and Defendant’s The parties make equipment such as molds and forming
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machines that shape concrete. This case and a related one, 10-cv-05667-RBL, involve many

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claims of infringement, but the Motion before this Court is narrowly defined. Columbia seeks a

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judgment that Besser literally infringes Claim 8 of the ‘610 Patent. Allegedly, Besser sells

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products identical to the Columbia alignment brackets that Claim 8 of the ‘610 Patent protects.

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Columbia supports its Motion for Partial Summary Judgment by arguing that the
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language in Claim 8 exactly matches five types of “Besser Molds” sold by Defendant. Besser

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responds that the Motion is premature and asks for a continuance pursuant to Rule 56(d) [Dkt.

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#15]. The Court’s ruling is set forth below.

ORDER - 1

II. FACTS

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1. U.S. Patent No. 5,505,610 (“the ‘610 Patent”)
In order to make a concrete object, such as a brick, concrete forming machines need a
mold box. Mold boxes include both a “mold assembly” and a “head assembly.” The mold

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assembly has cavities that are filled with concrete, and the head assembly has “shoes” for
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pushing down on the concrete in the cavities. The mold and head assemblies need to be aligned

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in order to produce a uniform concrete product. According to Columbia, the standard industry

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practice has been to mount the mold and head assemblies onto the concrete forming machine and

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then “jimmy” the assemblies to achieve alignment. Apparently, this jimmying takes a significant

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amount of time.
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Columbia claims it developed “alignment brackets” that do away with jimmying. These

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alignment brackets are the subject of Claim 8 of the ‘610 Patent. The alignment brackets lock the

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mold assembly and head assembly into place before putting them on the concrete forming

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machine. “After the locked assemblies are mounted, the alignment brackets are removed, and the
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assemblies maintain their pre-aligned positions. The head and mold assemblies do not have to be

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jimmied, down time is reduced, and productivity is increased.” (Decl. Aaseth, Dkt. #12, ¶ 5.)

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Allegedly, Besser sells five “complete molds” that function exactly like Columbia’s alignment

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brackets and thus infringe on Claim 8 of the ‘610 Patent. (Decl. Homen Exh. A, Dkt. #11.)

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2. Procedural History
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Columbia filed its Complaint in this case on April 7, 2011. The Complaint alleges

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infringement of five different patents, trademark infringement of the “CPM50” mark, and unfair

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competition. Columbia seeks a ruling as a matter of law that Besser literally infringes on Claim 8

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of the ‘610 Patent. In response, Besser seeks additional time and discovery to defend this claim.

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ORDER - 2

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On July 1, Columbia gave Besser its 26(a) initial disclosures. Discovery is scheduled to last well
into 2012.

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III. DISCUSSION
Columbia argues there is no genuine issue for trial because at least five Besser products

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literally infringe upon Claim 8 of the ‘610 patent. Besser asks for a continuance because it needs
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time to discover similar litigation, review file histories of the patents, determine whether

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equitable defenses exist, and research its product catalogues. Columbia opposes the continuance,

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arguing that its Motion is a narrow one, and that Besser failed to respond. Columbia argues the

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continuance under 56(d) should be denied because Besser can still raise equitable issues if the

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Motion is granted, Besser has failed to state with specificity what it expects to discover, and the
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information Besser seeks is within its own control.
“If a nonmovant shows by affidavit or declaration that, for specified reasons, it cannot
present facts essential to justify its opposition” to a motion for summary judgment, the court may

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defer considering the motion, allow time for discovery, or issue any other appropriate order.
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Fed. R. Civ. P. 56(d). Often, 56(d) requests are made after discovery, and in these cases the

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nonmovant must make (1) a timely application which (2) specifically identifies (3) relevant

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information, (4) where there is some basis for believing that the information sought actually

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exists. VISA Int’l Serv. Ass’n v. Bankcard Holders of Am., 784 F.2d 1472, 1475 (9th Cir. 1986).

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However, when there has been no adequate initial opportunity for discovery, a strict showing of
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necessity and diligence that is otherwise required for a request for additional discovery under

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summary judgment rule does not apply. Metropolitan Life Ins. Co. v. Bancorp Serv., LLC, 527

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F.3d 1330, 1337 (Fed. Cir. 2008).

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ORDER - 3

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Besser’s request for a continuance under 56(d) is GRANTED because there is little to

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gain from deciding the Motion at this point. Columbia has made a prima facie case that the five

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Besser products literally infringe on Claim 8 of the ‘610 Patent. (Mot., Dkt. #10, at 8.) Instead of

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attempting to create a genuine issue for trial, Besser has asked the Court for more time to review

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the patent files, discover other similar litigation, determine whether equitable defenses exist, and
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review its own files. Deciding the Motion now, without input from Besser on the substantive

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claim, would be unwise because the Court would be relying entirely on Columbia’s version of

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the facts. There is little reason to rule on a dispositive motion on incomplete facts, when

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discovery is ongoing and trial is a year away.

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Besser asks the Court to “dismiss” the Motion with instructions to re-file 90 days after
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the court has issued a trial and pre-trial schedule, or, in the alternative, continue the Motion for

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four months. Besser has already had some time to marshal facts in order to respond to the

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Motion; Besser received initial disclosures on July 1, and presumably has been working to obtain

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the needed evidence before that time and since. Columbia’s Motion is a narrow one, concerned
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with one claim on one patent. The Motion provides the names and pictures of five “Besser

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Molds” it claims literally infringe the ‘610 Patent. Therefore, Besser is instead ORDERED to

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submit its Response to Columbia’s Motion for Summary Judgment on Claim 8 of the ‘610 patent

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[Dkt. #10] no later than September 23. Plaintiff’s Reply, if any, is due September 30. The

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Motion for a Continuance [Dkt. #15] is, to this extent, GRANTED. The Motion for Partial
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Summary Judgment [Dkt. #10] is RE-NOTED for September 30, 2011.
IT IS SO ORDERED. Dated this 25th day of August, 2011.

A
RONALD B. LEIGHTON
UNITED STATES DISTRICT JUDGE
ORDER - 4