Case 0:10-cv-60524-WJZ Document 33
Entered on FLSD Docket 07/16/2010 Page 1 of 5
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 REPLY IN SUPPORT OF MOTION FOR CONTINUANCE OF DEADLINE PURSUANT TO RULE 56(F) TO RESPOND TO DEFENDANT’S MOTION FOR PARTIAL SUMMARY JUDGMENT
Plaintiff, Plasticase, Inc. (hereinafter “Plasticase” or “Plaintiff”), by and through undersigned counsel, hereby files its Reply in Support of its Motion for Continuance of Deadline Pursuant to Rule 56(f) to Respond to Defendant’s Motion for Partial Summary Judgment [DE 26], and states as follows: I.
ARGUMENT AND CITATION OF AUTHORITIES
Pursuant to the provisions of Fed. R. Civ. P. 56(f), Plasticase seeks a sixty (60) day continuance to conduct discovery relating to facts necessary to justify its opposition to Defendant’s Motion for Partial Summary Judgment [DE 23].
Plasticase requests this
continuance to seek discovery relating to the specifics of Defendant’s infringing activities and Defendant’s knowledge of Plasticase’s patents, U.S. Patent Nos. D578,759 and D579,202 (the “Patents-In-Suit”), and in turn, its infringement thereof. LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
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In its opposition papers, Defendant misunderstands and misconstrues the cited case law and the nature of the issues raised by Plasticase’s motion. Defendant’s opposition contends that “the only issue presented by the Summary Judgment motion is purely legal…[d]id Plaintiff comply with the patent marking statute such that Defendant was put on constructive notice that the patented case at issue was not subject to copying?” [DE 28] at 2.
This inaccurate
simplification fails to account for the specific and well-reasoned basis for Plasticase’s request for a continuance. Additionally, Defendant’s assertion that “information about infringement is irrelevant to whether Plaintiff engaged in legally sufficient marking practices prior to the date it gave actual notice to Defendant” is plainly incorrect. The applicable case law establishes that Plasticase is entitled to recover damages stemming from any infringing acts occurring after the date Invicta received constructive notice of Plasticase’s patents in accordance with 35 U.S.C. §287. American Medical Sys. v. Medical Eng'g Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993)(recovery of damages precluded “only for infringement for any time prior to compliance with the marking or actual notice requirements of the statute.”) Thus, with respect to constructive notice, the inquiry is twofold: (1) did Plasticase comply with the patent marking statute to provide Invicta with constructive notice of its patent; and (2) did Invicta manufacture, import, offer for sale, or sell any infringing products after the date Plasticase came into compliance. Plasticase does not deny that it is in position to answer the first inquiry in the affirmative without further discovery. Moreover, Plasticase is informed and believes that Invicta committed acts of infringement after Plasticase came into compliance with the constructive notice requirements of 35 U.S.C. §287. However, Plasticase is entitled, pursuant to Rule 56(f), to obtain definitive proof from Invicta, that certain, if not all, acts of infringement committed by 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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Invicta occurred after Plasticase provided constructive notice of the patents.
Specifically,
Plasticase is entitled to conduct discovery with regard to the specific acts of infringement committed by Invicta and when those acts occurred, evidence that is directly relevant to the inquiry at hand in Invicta’s Motion for Partial Summary Judgment. This information, at present, is solely in the possession of Invicta. Invicta asserts that there is no genuine issue of material fact as to constructive notice, yet opposes any attempt by Plasticase to discover facts that are essential and relevant to test such assertion. This situation is exactly what Rule 56(f) is intended to address. Invicta argues that “Plaintiff seeks to obtain additional information through discovery so that it can calculate a convenient date when it stopped distributing unmarked goods.” This statement is disingenuous in that the same could be said in reverse with regard to Invicta. That is, Invicta wishes Plasticase to provide its date of compliance with the marking requirements of 35 U.S.C. §287 so that it can calculate a convenient date when it infringed the Patents-in-Suit. This situation, however, is purely of Invicta’s own doing. To wit, in the overwhelming number cases, the parties to a litigation conduct discovery, and attempt to ascertain the facts relevant to a dispute, before seeking summary judgment.
In this case, however, Invicta chose to seek
summary judgment before conducting any discovery whatsoever, including in connection with the patent marking issues. Invicta cannot now complain that it is unfair for it to be required to provide discovery to Plasticase regarding its infringement dates when it does not know the date when Plasticase came into compliance with the patent marking requirements. Invicta also complains that granting Plasticase’s requested continuance to respond to the Motion for Partial Summary Judgment would result in the case being “placed on hold for two and a half months while Plaintiff engages in a fishing expedition for information which cannot 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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possibly be relevant to the Summary Judgment Motion.” It is unclear why Plasticase equates the granting of a continuance to respond to the Motion for Summary Judgment with a “hold” on all litigation. Invicta has moved only for partial summary judgment with respect to a single issue in this case (i.e., pre-notice patent damages) and there are numerous aspects of this case that are still ongoing, not the least being the fundamental issues of infringement and willfulness, independently of the Motion for Partial Summary Judgment. Moreover, Plasticase has filed, and Invicta has not opposed, a motion to amend the Complaint to add counts for false designation of origin and unfair competition which bring further issues into this litigation. Plasticase does not intend to place this case “on hold” for any period of time and has not requested such relief form the Court. II.
CONCLUSION
Based on the foregoing, Plasticase 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. Dated: July 16, 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 4
LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier
Case 0:10-cv-60524-WJZ Document 33
Entered on FLSD Docket 07/16/2010 Page 5 of 5 Case No.: 10-CV-60524-Zloch/Rosenbaum 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
5 LOTT & FRIEDLAND, P.A. • 355 Alhambra Circle • Suite 1100 • Coral Gables, Florida 33134 (305) 448-7089 • (305) 446-6191 telecopier