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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Case No.: 10-CV-60524-Zloch/Rosenbaum
PLASTICASE, INC., a Foreign corporation, Plaintiff, v. INVICTA WATCH COMPANY OF AMERICA, INC., a Florida corporation, Defendant. __________________________________/
PLAINTIFF’S MOTION AND INCORPORATED MEMORANDUM OF LAW FOR CONTINUANCE OF DEADLINE PURSUANT TO RULE 56(F) TO RESPOND TO DEFENDANT’S MOTION FOR PARTIAL SUMMARY JUDGMENT
Pursuant to the provisions of Fed. R. Civ. P. 56(f), Plaintiff, Plasticase, Inc. (hereinafter “Plasticase” or “Plaintiff”), by and through undersigned counsel, respectfully moves this Court for a continuance of the deadline to respond to Defendant Invicta Watch Company of America’s (hereafter “Invicta” or “Defendant”) Motion for Partial Summary Judgment on Damages for Non-Compliance with Marking Requirements Under 35 U.S.C. § 287(a) (hereinafter “Motion”) [DE 23] to permit Plaintiff to take additional discovery necessary to present the Court with facts essential to justify Plaintiff’s opposition to Defendant’s Motion for Summary Judgment. For the reasons set forth below, the Court should GRANT Plaintiff’s Motion.
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
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I.
INTRODUCTION
This is a case for patent infringement arising from Defendant’s unlawful manufacture, importation, and sale of plastic storage cases that undoubtedly infringe two design patents owned by Plasticase, U.S. Patent Nos. D578,759 and D579,202 (the “Patents-In-Suit”). Only weeks after Defendant filed its Answer and prior to delivering responses to Plasticase’s written discovery requests, Defendant filed its Motion contending that there is no genuine issue of material fact that Plasticase did not comply with the patent marking statute, 15 U.S.C § 287(a) and, therefore, Plasticase is not entitled to recover damages for Invicta’s infringement. Defendant’s Motion was filed prematurely and without an adequate record. As demonstrated below, without further discovery Plasticase cannot present facts essential to justify an opposition to summary judgment. Accordingly, Plasticase respectfully requests that the Court grant the instant motion and allow Plasticase sixty (60) days to conduct discovery in order to adequately respond to Defendant’s Motion for Partial Summary Judgment. II.
ARGUMENT AND CITATION OF AUTHORITIES A. Legal Standard
“It is axiomatic that ‘summary judgment should not be granted until the party opposing the motion has had an adequate opportunity for discovery.’” Belize Telecom, Ltd. v. Gov't of Belize, 2005 U.S. Dist. LEXIS 18591 (S.D. Fla. 2005)(granting Plaintiff the right to take additional discovery on damages); See also Ruiz v. 119th St. Exxon, Inc., 2009 U.S. Dist. LEXIS 84075 (S.D. Fla. 2009), citing WSB-TV v. Lee, 842 F.2d 1266, 1269 (11th Cir. 1998)("summary judgment may only be decided upon an adequate record."). Accordingly, Federal Rule of Civil Procedure 56(f) permits the Court to order a continuance when a party files a premature motion for summary judgment. Rule 56(f) states: 2 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
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"If a party opposing the motion [for summary judgment] shows by affidavit that, for specified reasons, it cannot present facts essential to justify its opposition, the court may: (1) deny the motion; (2) order a continuance to enable affidavits to be obtained, depositions to be taken, or other discovery to be undertaken; or (3) issue any other just order."
Here, the record is incomplete at best. Defendant’s Motion was filed prior to even delivering responses to Plaintiff’s initial discovery requests and with virtually no documentation having been provided under its initial disclosure obligations. No depositions have been taken and none have been scheduled to date. Indeed, this Court has not yet issued a Scheduling Order setting the discovery and pre-trial deadlines. Based on the facts and applicable law, Plasticase should be granted a sixty-day continuance of the deadline to respond to Defendant’s Motion. B. Plaintiff Should Be Permitted to Take Discovery on Issues Essential To Defendant’s Motion Defendant’s Motion asserts that the sample cases sent by Plasticase to Defendant in July 2009 did not contain the patent markings necessary to place Defendant on notice of the PatentsIn-Suit. Defendant erroneously concludes that, because Plasticase was shipping cases in July 2009 that did not comply with the patent marking statute, it is not entitled to recover damages for any infringement occurring prior to the date the instant suit was filed (April 6, 2010). [DE 23-1] at 4. Defendant’s Motion misstates the applicable law and fails to recognize that Plasticase need only demonstrate that it did come into full compliance with the marking statute sometime between July 2009 and April 2010, the operative timeframe of Defendant’s multiple acts of infringement, in order to defeat summary judgment. The Federal Circuit in American Medical Sys. v. Medical Eng'g Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993) held that the patent marking statute, 35 U.S.C. §287, precludes recovery of damages “only for infringement for any time prior to compliance with the marking or actual 3 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
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notice requirements of the statute.” Accordingly, “a delay between issuance of the patent and compliance with the marking provisions of section 287(a) will not prevent recovery of damages after the date that [compliance] has begun.” Id. Therefore Plasticase is entitled to damages occurring after the date that compliance with the marking statute began, provided that Invicta was still committing infringing acts. By Defendant’s own admission, sale and distribution of infringing cases began at least as early as July 17, 2009 and did not cease until Defendant was purportedly notified of the infringement by way of Plasticase’s Complaint. See [DE 23-1] at 4-5. Each sale, offer for sale, or act of distribution of the cases by Defendant during this time period constitutes an independent and distinct act of infringement. SGS-Thomson Microelectronics v. International Rectifier Corp., 1994 U.S. App. LEXIS 17418 (Fed. Cir. 1994)(“Section 271(a) of title 35 of the United States Code makes clear that each sale of a [patented product] is an act of infringement.”). Thus, if Plasticase was compliance with the marking statute prior to any acts of infringement occurring between July 2009 and April 2010, it is entitled to recover damages for those acts. Based on the minimal amount of information presently available to Plasticase, it is impossible for it to determine the nature and extent of the ongoing acts of Defendant’s infringement, including the specific dates that Defendant imported, offered for sale, and sold the infringing cases to its customers, or induced others to do so. Only through additional document production and depositions can Plasticase gather adequate facts on this issue and lodge an appropriate opposition to Defendant’s Motion. In addition to discovery regarding the specifics of Defendant’s infringement, Plasticase also requires discovery regarding whether Defendant had actual knowledge of Plasticase’s patent rights and its infringement, prior to committing any act of infringement. The patent marking 4 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
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statute provides that in the event that the patentee fails to properly mark its products, damages are recoverable “on proof that the infringer was notified of the infringement and continued to infringe thereafter.” 35 U.S.C §287(a).
Plasticase has not yet had the opportunity to obtain
discovery, including deposition testimony of Defendant’s corporate representatives, regarding whether Defendant knew of Plasticase’s patent rights and that it was infringing those rights prior to any of Defendant’s multitude of infringing acts. Without this crucial discovery, an appropriate and justified opposition to Defendant’s Motion cannot be lodged. In addition, Plasticase has a right to challenge the affidavits and other factual statements offered by Defendant in support its Motion by conducting sufficient discovery to enable it to determine whether it can present additional affidavits, documents, or other evidence to refute Defendant’s position as to patent marking. Plasticase has met the requirements of Rule 56(f) and should be allowed the opportunity to utilize the discovery process to gain access to information necessary to justify an adequate opposition to Defendant’s Motion. Specifically, to adequately respond, Plasticase needs to take discovery at least on the following topics: 1) The nature and extent of defendant’s acts of infringement between July 2009 and April 2010, including the dates and circumstances of Defendant’s manufacture, importation and offer for sale, and sale of the infringing cases. 2) Defendant’s knowledge of Plasticase’s patent rights and of Defendant’s infringement thereof, irrespective of whatever marking Defendant contends was or was not present on the sample cases shipped by Plasticase to Defendant in July 2009. 3) Any and all facts that may refute the factual allegations asserted by Defendant in its Motion.
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The Declaration of Ury Fischer, supporting the allegations in this motion and attesting to the specified reasons required by Rule 56(f), is attached as Exhibit A. Plasticase anticipates it can complete the requested discovery within sixty (60) days. Plasticase asks for twenty-one (21) additional days after the completion of such discovery to file its opposition to Defendant’s Motion. A proposed order is attached hereto for the convenience of the Court. III.
CONCLUSION
For the reasons specified above, Plaintiff respectfully requests the Court GRANT the instant motion and order a sixty (60) day continuance of the deadline to respond to Defendant’s Motion to allow for additional discovery to be conducted. IV.
CERTIFICATION UNDER LOCAL RULE 7.1(A)(3)
The undersigned counsel hereby certifies that, as required by Local Rule 7.1(A)(3), it has conferred with Defendant’s counsel, Robert Schwartz, and made a good-faith effort to resolve or narrow the issues raised in this motion. Mr. Schwartz has advised that Defendant is not opposed to Plaintiff’s request to extend the deadline to oppose Defendant’s Motion or for additional discovery. However, Defendant objects to the length of the continuance and the scope of the discovery requested herein.
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Dated: July 9, 2010
Respectfully submitted, LOTT & FRIEDLAND, P.A.
By:
s/Ury Fischer Ury Fischer Florida Bar No. 0048534 e-mail: ufischer@lfiplaw.com Geoffrey Lottenberg Florida Bar No. 056240 e-mail: glottenberg@lfiplaw.com 355 Alhambra Circle, Suite 1100 Coral Gables, Florida 33134 (305) 448-7089 telephone (305) 446-6191 telecopier Attorneys for Plaintiff, Plasticase, Inc.
CERTIFICATE OF SERVICE I hereby certify that on the above referenced date, I electronically filed the foregoing document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is being served this day on all counsel of record or pro se parties identified on the attached Service List in the Manner specified, either via transmission of Notices of Electronic Filing generated by CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to receive electronically Notices of Electronic Filing.
s/Ury Fischer Ury Fischer Robert M. Schwartz Florida Bar No. 304018 2445 Hollywood Boulevard Hollywood, Florida 33020 litigation@patentmiami.com Attorney for Defendant Invicta Watch Company of America, Inc. Service via Notices of Electronic Filing generated by CM/ECF 7 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier