Case 0:10-cv-60524-WJZ Document 34
Entered on FLSD Docket 07/20/2010 Page 1 of 7
IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA CASE NO: 10-CV-60524-ZLOCH/ROSENBAUM PLASTICASE, INC., a Foreign corporation
) ) Plaintiff ) ) vs. ) ) INVICTA WATCH COMPANY ) OF AMERICA, INC., ) a Florida corporation ) ) Defendant ) _____________________________ /)
DEFENDANT’S MOTION AND INCORPORATED MEMORANDUM TO STAY DISCOVERY ON DAMAGES AND TO LIMIT DISCOVERY UNTIL A RULING IS MADE ON DEFENDANT’S MOTION FOR PARTIAL SUMMARY JUDGMENT ON DAMAGES FOR NON-COMPLIANCE WITH MARKING REQUIREMENTS UNDER 35 U.S.C. § 287(a)
Defendant, Invicta Watch Company of America, Inc., moves for an order to stay discovery on damages pending a ruling on Defendant’s Motion for Partial Summary Judgment on Damages for Non-Compliance with Marking Requirements Under 35 U.S.C. § 287(a). Additionally, Defendant seeks to limit initial discovery to the pending Summary Judgment Motion. Defendant makes this Motion pursuant to Federal Rules of Civil Procedure 1 and 26(c) and the inherent authority of the court. This action arises out of Plaintiff’s allegations of patent infringement of its plastic case design. Plaintiff, Plasticase, Inc., seeks injunctive relief and damages. Defendant, Invicta, has asserted that Plaintiff’s failure to mark its patented products precludes recovery of damages occurring
Case 0:10-cv-60524-WJZ Document 34
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before Defendant received actual notice of infringement (i.e. the date Defendant was served with the instant lawsuit). Accordingly, Defendant has filed a motion for partial summary judgment which, if successful, will greatly limit the available damages. Given the dispositive nature of the summary judgment motion on the issue of pre-suit damages, Defendant seeks to stay discovery on damages until the court has ruled on the summary judgment motion. Federal Rule of Civil Procedure 1 requires that the rules be “construed and administered to secure the just, speedy and inexpensive determination of every action and proceeding.” In addition thereto, District courts have “broad discretion in deciding how best to manage the cases before them.” Chudasama v. Mazda Motor Corp., 123 F.3d 1353, 1366 (11th Cir. 1997). Rule 1’s mandate merits a Rule 26(c ) discovery stay in appropriate circumstances, such as the pendency of a dispositive motion. The Eleventh Circuit Court of Appeals has repeatedly acted in accordance with this directive. See Id. (holding that district court should not have required defendant to provide discovery on plaintiff’s fraud claim until after court had decided defendants’ motion to dismiss that claim); Moore v. Potter, 141 Fed. Appx. 803, 2005 WL 1600194 (11th Cir. July 8, 2005)(affirming stay of discovery pending disposition of motions to dismiss for failure to state a claim); Patterson v. United States Postal Service, 901 F.2d 927, 929 (11th Cir. 1990) (affirming stay of discovery pending disposition of motion to dismiss or for summary judgment). In Patterson, the Eleventh Circuit held that the district court’s stay of discovery pending disposition of the defendant’s case-dispositive motion was appropriate, noting that the district court had sufficient information before it to rule on the motion when the
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Case 0:10-cv-60524-WJZ Document 34
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stay order was issued. The same is true in the instant case. The issues raised in Defendant’s Motion for Partial Summary Judgment are dispositive to the issue of pre-suit damages. A patentee’s failure to consistently mark substantially all of its products precludes it from collecting damages accruing prior to the date it provided actual notice of infringement to the defendant. Halliburton Services v. Smith International, Inc., 317 F. Supp.2d. 719 (E.D. Tex. 2004) citing American Medical Systems, Inc. v. Medical Engineering Corp., 6 F.3d 1523, 1537-38 (Fed. Cir. 1993). If the Defendant’s partial summary judgment motion succeeds, damages are attributable only to the time frame between actual notice (i.e. the service of the Complaint) and Defendant’s almost immediate voluntary cessation of sales. Hence, Plaintiff’s only meaningful remedy will be injunctive relief, to which Invicta has already agreed. There is sufficient information before the Court in the instant case for a ruling to be made on the motion for summary judgment. If the summary judgment motion is granted, the scope of discovery in this case will be limited considerably. It is not in the interest of the parties or judicial economy to engage in unnecessary discovery. Indeed, should the Court find that Plasticase failed to fully comply with the patent marking statute, other areas of inquiry will also become irrelevant and unnecessary since Invicta has already entered into a preliminary injunction by consent. For example, the identity of the manufacturer, importer and distributor of the accused cases will be irrelevant since those entities dealt with the products before Invicta received actual notice of the alleged patent infringement and once actual notice was received all such activity ceased. In Fonar Corp. v. General Electric Co., 107 F.3d 1543 (Fed. Cir. 1997), cert. denied, 118 S. Ct. 266 (1997) “the Federal Circuit held that continuing to service
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Case 0:10-cv-60524-WJZ Document 34
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machines after receiving notice of a patent covering such machines is not inducement of infringement when the machines were sold before receiving such notice and the owner of the patent failed to mark products covered by the patent.” (quoting Chisum) For this reason, in addition to staying discovery on damages, Defendant seeks to limit the present discovery efforts to information required to address the issue presented in the Summary Judgment Motion. For example, Plaintiff presently has noticed a 30(b)(6) deposition of the Defendant corporation but the information sought in the notice may be irrelevant if the Summary Judgment Motion is granted. It is a waste of time and finances to pursue discovery that may be rendered irrelevant. The Eleventh Circuit noted in Chadasma that discovery imposes substantial costs on the litigant from whom discovery is sought, including “the time spent searching for and compiling relevant documents; the time, expense, and aggravation of preparing for and attending depositions; the costs of copying and shipping documents; and the attorney’s fees generated in interpreting discovery requests, drafting responses to interrogatories and coordinating responses to production requests, advising the client as to which documents should be disclosed and which ones withheld, and determining whether certain information is privileged.” Chudasama, 123 F.3d at 1367-68. If Defendant is subjected to the burden of preparing damage discovery or discovery on issues that may become irrelevant prior to disposition of the partial motion for summary judgment, it will spend a great deal of money and time gathering and sharing information that is not relevant to the case. Accordingly, Defendant seeks an order from the Court staying discovery on the issue of damages and limiting discovery to those issues required for a ruling on the
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pending Motion until a ruling can be made on Defendant’s Motion for Partial Summary Judgment on Damages for Non-Compliance with Marking Requirements Under 35 U.S.C. § 287(a). Such a stay on this limited point of discovery will aid in the “just, speedy and inexpensive determination” of this case. No party will suffer substantial harm by a stay pending the Court’s ruling on the partially dispositive motion. Indeed, Defendant will be spared the time and expense of locating, gathering and reviewing potentially irrelevant information. Should Defendant not prevail on its motion, the same discovery materials will still be available to Plasticase and the delay will not prejudice Plasticase’s ability to collect damages if ultimately awarded. Invicta is a sizeable company and a well-financed going concern. Plasticase cannot be heard to argue that a delay will affect its ability to collect damages. Therefore, it is in the interests of efficiency and justice that the Court grant a stay of discovery on damages until it has ruled on Defendant’s partially dispositive summary judgment motion on the issue of presuit damages.
Respectfully submitted.
Dated: July 20, 2010
_/s/ Robert M. Schwartz Robert M. Schwartz, Esq. Florida Bar No. 304018 Robert M. Schwartz, P.A. 2445 Hollywood Boulevard Hollywood, Florida 33020 Telephone: (954) 924-0707 Facsimile: (954) 924-0717 Email: litigation@patentmiami.com Attorneys for Defendant, Invicta Watch Company of America, Inc..
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Case 0:10-cv-60524-WJZ Document 34
Entered on FLSD Docket 07/20/2010 Page 6 of 7 CASE NO: 10-CV-60524-ZLOCH/ROSENBAUM
CERTIFICATE OF GOOD FAITH CONFERENCE
I hereby certify that counsel for the movant has conferred with all parties or non-parties who may be affected by the relief sought in this motion in a good faith effort to resolve the issues but has been unable to do so or has made reasonable efforts to confer with all parties or non-parties who may be affected by the relief sought in the motion, but has been unable to do so. __/s/ Robert M. Schwartz____ Robert M. Schwartz, Esq.
CERTIFICATE OF SERVICE I HEREBY CERTIFY that on the 20th day of July, 2010, 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 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/ Robert M. Schwartz_____________ ROBERT M. SCHWARTZ, ESQUIRE Florida Bar No. 304018 Robert M. Schwartz, P.A. Attorney for Defendant 2445 Hollywood Boulevard Hollywood, Florida 33020 Telephone: (954) 924-0707 Facsimile: (954) 924-0717 Email: litigation@patentmiami.com
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Case 0:10-cv-60524-WJZ Document 34
Entered on FLSD Docket 07/20/2010 Page 7 of 7 CASE NO: 10-CV-60524-ZLOCH/ROSENBAUM Service List
PLASTICASE, INC. V. INVICTA WATCH COMPANY OF AMERICA, INC. CASE NO: 109-CV-60524-ZLOCH/ROSENBAUM
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA Geoffrey Lottenberg Ury Fischer Lott & Friedland 355 Alhambra Circle Suite 1100 PO Drawer 141098 Coral Gables, FL 33134-1098 Tel: 305-448-7089 Fax: 305-446-6191 Email: glottenberg@lfiplaw.com Email: ufischer@lfiplaw.com
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Case 0:10-cv-60524-WJZ Document 34-1
Entered on FLSD Docket 07/20/2010 Page 1 of 1
IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA CASE NO: 10-CV-60524-ZLOCH/ROSENBAUM PLASTICASE, INC., a Foreign corporation
) ) Plaintiff ) ) vs. ) ) INVICTA WATCH COMPANY ) OF AMERICA, INC., ) a Florida corporation ) ) Defendant ) _____________________________ /) ORDER This matter having been before the Court on Defendant’s Motion and Incorporated Memorandum to Stay Discovery on Damages And to Limit Discovery Until a ruling is made on Defendant’s Motion For Partial Summary Judgment on Damages for Non-compliance with Marking Requirements under 35 U.S.C. § 287(a), the Court having been advised in the premises, IT IS HEREBY ORDERED that: (1)
The Court stays all discovery on damages pending a ruling on Defendant’s
Motion For Partial Summary Judgment On Damages For Non Compliance With Marking Requirements Under 35 U.S.C. § 287(a). (2)
Initial discovery in this matter shall be further limited to the marking
issues raised in Defendant’s Motion For Partial Summary Judgment On Damages For Non Compliance With Marking Requirements Under 35 U.S.C. § 287(a).
DONE AND ORDERED in Chambers in Broward, Florida, this ______ day of ___________, 2010. ___________________________________ WILLIAM J. ZLOCH UNITED STATES DISTRICT COURT JUDGE cc:
To all counsel of record