National Graphics Inc v. Brax Ltd et al
ORDER signed by Chief Judge William C Griesbach on 5-19-14 denying 93 Motion for Protective Order; granting 95 Motion for Reconsideration ; granting 101 Motion for Leave to File. (cc: all counsel) (Griesbach, William)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
NATIONAL GRAPHICS, INC.,
Case No. 12-C-1119
BRAX LTD, et al.,
DECISION AND ORDER
Before me presently are two Rule 7(h) expedited motions. Plaintiff NGI asks for a
protective order restricting discovery, and Defendant Capitol Cups asks for reconsideration of part
of this court’s April 24 Decision and Order.
1. Protective Order
Defendant Dynamic Drinkware LLC noticed two third-party depositions, which in Plaintiff’s
view are improper because they appear to be directed at the defenses of prior use and coinventorship. In an April 24, 2014 Decision and Order, this court granted summary judgment for
the Plaintiff on the Defendants’ co-inventor and prior use defenses, as least as to the moving parties.
Thus, Plaintiff asks that a protective order be entered to preclude the discovery.
Defendant Dynamic Drinkware argues, however, that although the sought testimony might
indeed speak to those defenses, it also speaks to the questions of anticipation or obviousness. For
example, one of the deponents, Clarence Liddicoat, is expected to say that he taught NGI
representatives his company’s technology in 2001, prior to the application for the patents at issue.
If true, that would go to the issue of obviousness and to the status of the prior art. The other
deponent, Roger Heathcote, was a long-time employee of NGI expected to have similar knowledge
of such issues.
It is true that some of the discovery sought could pertain to defenses that are no longer live,
but discovery is broad and the Plaintiff has not shown that the discovery sought would have no
bearing on issues that continue to remain in this action. Moreover, there is no sense of harassment
or undue burden here. Accordingly, the motion for a protective order will be denied.
2. Motion to Reconsider
Defendant Capitol Cups moves for reconsideration of the part of this court’s Decision and
Order granting partial summary judgment both for and against Capitol Cups. It notes that it was not
a party to the summary judgment motion filed by the other Defendants. Concluding that it lacked
adequate discovery at that point (discovery was not yet closed), Capitol Cups deliberately opted not
to join the other Defendants’ motion, instead limiting its briefing to claim construction. For its part,
NGI’s own motion was a cross-motion directed at the defenses raised in the other Defendants’
motion. Capitol Cups also notes that it made its non-participation in the motions clear during a
February 6 hearing. Accordingly, it argues that this court erred when it granted partial summary
judgment both for and against it.
Plaintiff responds by arguing that Capitol Cups was joined at the hilt with the other
Defendants. Generally, the time for stating that more discovery is required is prior to the filing and
entry of dispositive motions, not after. In addition, Capitol Cups never filed an affidavit under Rule
56(d) stating that more discovery was required.
I am satisfied that the motion should be granted. Capitol Cups attempted to make clear the
fact that it was not participating in the motion practice, and discovery had not yet closed. Rule 56(d)
applies to “nonmovants,” meaning parties against whom motions are filed, and Plaintiff’s crossmotion was not directed at Capitol Cups. Fed. R. Civ. P. 56(d). As such, it was under no additional
obligation to do more than it did. Ultimately, the timing of the motions and the claim construction
was unusual, and that likely led to the unusual course of proceedings we now face. Capitol Cups
should not be prejudiced due to no fault of its own.
The motion for a protective order  is DENIED. The motion to reconsider  is
GRANTED. Summary judgment is not granted either for or against Capitol Cups, Inc., and any
portions of the Decision and Order  stating otherwise are vacated. The motion to file a reply
 is GRANTED.
Dated this 19th day of May, 2014.
/s William C. Griesbach
William C. Griesbach, Chief Judge
United States District Court
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