PROST, Circuit Judge.
Baron Services, Inc., ("Baron") appeals the orders of the United States District Court for the Northern District of Alabama awarding summary judgment of noninfringement and attorney's fees to Media Weather Innovations, LLC ("MWI"). Because the district court's summary judgment order was premature, we vacate the court's summary judgment and award of attorney's fees and remand for further proceedings consistent with this opinion.
Baron owns U.S. Patent No. 6,490,525 ("'525 patent"), which "generally relates to systems and methods for weather reporting and forecasting, and more particularly, to computerized systems and methods for reporting and forecasting real-time weather information." '525 patent col. 1 ll. 19-22. In May 2011, Baron filed a civil action alleging that MWI's WeatherCall programs infringed the '525 patent. The schedule for the case was set by the district court in an order that, among other deadlines, set discovery to end on July 13, 2012. The order did not, however, set a timetable for Markman proceedings or for exchanging invalidity or infringement contentions.
About two months after filing its complaint, Baron served MWI with a request for production of the source code used by the WeatherCall products. Instead of producing the requested code, however, MWI moved the court for a protective order.
On October 4, 2011, the district court granted MWI's motion to protect its source code from disclosure "without prejudice to [Baron]'s right to seek said information at a more appropriate time in the litigation." J.A. 166. The court held that it could not determine "if the source code is relevant to the issues in this action" because Baron "failed to plead in what manner [MWI] is alleged to be infringing." J.A. 164.
After the court's decision, the parties continued to proceed with discovery. Relevant here, Baron noticed depositions of Ritterbusch and Fannin,
On the day Baron's responses to MWI's discovery requests were due, November 21, 2011, Baron moved the district court to "improve the efficiency and orderliness of th[e] case" by setting a Markman hearing and adopting the Patent Rules that were in use by another judge in the Northern District of Alabama. J.A. 172. With its motion, Baron included a proposed schedule detailing a timetable for disclosures and joint filings relating to infringement contentions, validity contentions, and Markman proceedings. In addition, Baron moved the court to enter "an order staying Baron's obligations to respond to certain of MWI's Discovery Requests, as explicitly set forth in the Patent Rules, until the applicable dates set forth in [Baron's proposed schedule]." J.A. 174.
On the same day Baron filed its motion, it served timely responses to MWI's written discovery requests. In those answers, Baron objected to defining claim terms as premature in light of the schedule that Baron proposed for the court to adopt.
On December 27, 2011, MWI filed a motion for summary judgment of noninfringement. MWI argued that undisputed facts proved that it did not infringe the '525 patent. According to MWI, "[t]he only service that MWI offers its subscribers is to forward National Weather Service warnings," "Baron admits that warnings issued by the National Weather Service do not infringe any claim of the '525 Patent," and "Baron has therefore admitted that MWI's services do not infringe any claim of the '525 Patent." J.A. 470-71. In support of its motion, MWI submitted a new affidavit by Valerie Ritterbusch in which she explained why the accused products did not satisfy the limitations of the asserted claims given her understanding of certain claim terms in the '525 patent.
Baron filed a timely response to MWI's motion for summary judgment and provided the district court with several documents produced by MWI during discovery. Citing Federal Rule of Civil Procedure 56(d), Baron argued that summary judgment was premature because the court had not yet construed the terms of the '525 patent, because it had not yet had the opportunity to review MWI's relevant source code, and because it had yet to depose Ritterbusch and Fannin. Pointing to a provisional patent application filed by MWI for the accused products, Baron also argued that there was a genuine dispute concerning the material fact whether the accused products "analyzed" weather data from the NWS. According to Baron, the description of MWI's WeatherCall programs in the provisional application contradicted the statements in the affidavits submitted by MWI.
After responding to MWI's motion for summary judgment, Baron filed a motion to compel production of MWI's source code. Baron asserted its infringement contentions clearly demonstrated the relevancy of the code, but MWI continued to refuse repeated requests to produce it. Without the source code, Baron argued, "[it] and the Court will simply have to rely on MWI's word as to how its products function without any ability to test, through expert review of the source code, whether MWI's statements are accurate or inaccurate." J.A. 755.
On January 24, 2012, the court held a hearing to address MWI's summary judgment motion and Baron's outstanding motions. At the hearing, Baron reiterated its argument that summary judgment was premature and unwarranted. Baron discussed the details of the MWI's provisional patent application, including how it believed the document revealed that MWI's WeatherCall products analyze "the [NWS] alert type, time of the alert, and the geographic area affected by the alert ... in the same way that is taught by the patent." D.E. 47 at 19. Baron also explained how an infringement analysis would turn on the construction of key terms in the asserted claims: "[MWI] say[s] in their response, well, we don't use a geographic area, but they say right here [in its provisional patent application] that they do use a geographic area," id.; "this [provisional patent application] says that their product is analyzed by the system, ... they said that the word `analysis' here doesn't mean the same as the word `analysis' in our patent," id. at 16; "[t]hey say [an alert]'s not meteorological data[,] I don't know how you say a weather alert is not meteorological data," id. at 15.
At the hearing, Baron also summarized its argument why summary judgment was premature.
Id. 23. Baron specifically highlighted the importance of MWI's source code to its opposition to summary judgment.
Id. at 20. The district court, however, looked to the briefing and affidavits filed by MWI and summarized Baron's argument as: "I don't believe what they say; I want to go in and dig deeper and see if they are lying." Id. at 17.
Throughout the hearing, MWI's arguments also centered on disputed claim terms and the relevancy of the source code. "[W]e have a source code that enables us to analyze — and I will use that term `analyze' — to reach the geographic latitudes and longitudes of a NWS warning and then compare that polygon with addresses that we have for our subscribers." Id. at 36. "[W]e find out the type of alert, we find out the time, and we find out the geographical area. That's what we mean by analyze." Id. at 51. But "we do it arithmetically. There's nothing special about it. We do it by virtue of math. That's why our source code is irrelevant." Id. at 43-44. And, as it stated, MWI did not infringe because "the patent claims that it has a logic ... designed to do one thing and one thing only, and that's to determine ... whether a contact [sic] identifier identifies a remote unit that is located within the area of a weather alert."
On February 1, 2012, the court granted MWI's motion for summary judgment of noninfringement and found Baron's outstanding motions to be moot. Disposing of Baron's petition under Rule 56(d), the court found that Baron never "ask[ed] for more time to complete discovery" and failed to "assert it could not prosecute this action without further discovery." J.A. 29. Accordingly, "left solely with [MWI]'s affidavit evidence," the court concluded that Baron's opposition to summary judgment consisted only of asserting that MWI "is lying." J.A. 15, 28. In the court's view, MWI had therefore "submitted unrefuted evidence that its service does not perform numerous steps of the plaintiff's patent," namely, MWI's evidence demonstrated that "it does not use a geographical area, region, cell, or grid to determine areas to be altered." J.A. 28.
After reaching its conclusion on infringement, the court held that claim construction was unnecessary, even though Baron "obstinately insisted" otherwise. Its
Shortly after prevailing on summary judgment, MWI filed a motion for attorney's fees pursuant to 35 U.S.C. § 285, which the court also granted. In April 2012, the court entered judgment awarding MWI $243,757.45 for attorney's fees.
Baron timely appealed the grant of summary judgment of noninfringement and the award of legal fees. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a)(1).
Under Federal Rule of Civil Procedure 56(d), a party opposing a summary judgment motion may request that a district court delay ruling on the motion in order to obtain additional discovery without which "it cannot present facts essential to justify its opposition." Fed.R.Civ.P. 56(d).
Here, Baron requested that the district court delay ruling on MWI's summary judgment motion until it had to the opportunity to examine MWI's source code and to depose Ritterbusch and Fannin.
Baron's opportunity to depose Ritterbusch and Fannin was equally important to Baron's ability to adequately oppose summary judgment. As demonstrated by their affidavits, Ritterbusch and Fannin both possessed personal knowledge of the functionality of the accused products. Their affidavits were MWI's primary evidence to support its motion for summary judgment, and the statements made in them were accepted as true by the district court. Deposing Ritterbusch and Fannin would have provided Baron its principal opportunity to directly challenge the veracity of the statements made in their affidavits.
Therefore, under the circumstances here, it was improper for the district court to have refused Baron's request to delay ruling on MWI's summary judgment motion until Baron had the opportunity to access MWI's source code and depose Ritterbusch and Fannin. See Metro. Life Ins. Co. v. Bancorp Servs., L.L.C., 527 F.3d 1330, 1338 (Fed.Cir.2008) (reversing district court refusal to grant Rule 56(d) motion when discovery sought was the principal opportunity to contradict statements in declarations that a district court treated as truthful and dispositive); see also Wideman v. Shallowford Cmty. Hosp., Inc., 826 F.2d 1030, 1037 n. 11 (11th Cir.1987)
The district court prematurely granted summary judgment of noninfringement to MWI. We therefore vacate the district court's summary judgment order, including its dismissal of Baron's outstanding motions as moot, and the district court's order and judgment awarding attorney's fees to MWI. We remand this case to the district court for further proceedings consistent with this opinion. In remanding for further proceedings, we express no opinion as to whether Baron has a meritorious cause of action; after claim construction and further discovery, it may be that the cause of action is nonmeritorious. But Baron is entitled to the opportunity to prove otherwise under a correct claim construction with appropriately limited discovery.
Each party shall bear their own costs.
REYNA, Circuit Judge, dissenting.
This case presents the question of at what point should the case management perspectives of a party trump an otherwise properly entered summary judgment? The majority takes the unusual course of vacating a summary judgment determination that is supported by the record evidence based on the premise that the district court failed to manage procedure and discovery in accordance with Baron Services, Inc.'s ("Baron") case management expectations which the district court held to be unreasonable and obstructive. I find that the district court's case management was not an abuse of discretion, and that the record evidence supports the entry of summary judgment. I respectfully dissent.
Baron accuses Media Weather Innovations, LLC ("MWI") of infringing U.S. Patent No. 6,490,525 ("the '525 Patent") by transmitting National Weather Service ("NWS") warnings. The written description of the '525 Patent discloses a computer-based system that, after compiling meteorological data, may predict the path of a storm, '525 Patent col. 3 ll. 39-41, use the data to generate storm profiles, id. at col. 4 ll. 57-59, and perform "storm tracking functions." '525 Patent col. 6 ll. 24-27, 64-65. The end result, at least as envisioned in the preferred embodiment, is that the generated storm profiles are "distributed to the respective remote units by the distribution network" so that an end user receives "site-specific" and "highly relevant" weather information. '525 Patent col. 4, ll. 59-65.
The asserted claims are drawn to "logic" configured to manipulate weather data and make determinations relating to weather events. The logic is also configured to transmit such weather-related determinations to a user in a geographic region experiencing the impending weather event. Claim 1 recites:
'525 Patent col. 10 ll. 33-47 (emphases added). Based on the plain language of the representative claim, it cannot be infringed unless an accused system compiles data and determines, based on the user's location, where to send the corresponding warning. The issue before the district court was whether MWI's dissemination of unmanipulated NWS warnings, to a user at a self-designated location,
The dispositive summary judgment rationale — that MWI's products do not infringe because they merely download publicly available NWS notifications and forward the notifications to subscribers — is based on Baron's admissions and statements concerning what constitutes infringing activity. See J.A. 22; J.A. 1034. First in its written discovery responses, and later at oral argument, Baron defined the parameters of noninfringement: "[W]e concede just getting information from the National Weather Service and just passing it along without manipulation... would not be an infringement of the patent." J.A. 1034; see also J.A. 380. The district court noted that "Baron admits that information from the National Weather Service alone, including a `warning', [sic] does not infringe the '525 Patent." J.A. 23, n. 9 (quoting J.A. 380) (emphasis in original omitted).
In moving for summary judgment, MWI argued that its straightforward dissemination of weather information — without analysis or manipulation — could not satisfy the specific logic requirements of the asserted claims and fell squarely within Baron's parameters of noninfringement. To support its position, MWI adduced evidence, including sworn declarations of corporate representatives, J.A. 138-39; J.A. 141-43; J.A. 491-92, copies of the alerts MWI disseminated to subscribers, J.A. 1058, and a proposal in the MWI provisional patent application describing preferred embodiments as delivering NWS warning without meteorological analysis or forecasting. See J.A. 626-27. The witness declarations provided a particularized comparison between operation of the accused products and the limitations in the claims. Mr. Michael Fannin, developer of the accused products, explained that the computer source code does not analyze meteorological data as claimed in the '525 Patent. J.A. 138. Similarly, Ms. Valerie Ritterbusch, President of MWI, provided two declarations clarifying that there is no analysis of data, id. at 142, and confirmed that the accused products transmit NWS
Relying primarily on the witness declarations, the district court granted summary judgment because the MWI "does not use a geographical area, region, cell or grid to determine areas to be alerted." J.A. 28. In particular, the district court cited to Baron's admission in the written discovery response, and then evaluated the sworn statement of Ms. Ritterbusch stating that MWI "only transmit[s] National Weather Service warnings to members of the public who subscribe to MWI's services." J.A. 24 (quoting J.A. 491). After pointing out that Baron had not presented any evidence of infringement, by affidavit or otherwise, the district court concluded that MWI's unrefuted showing established that it merely passes on alerts and such basic activities could not, as a matter of law, perform the numerous steps recited in the asserted claims. See id. at 28-29 (citing Ritterbusch declaration).
In light of this body of evidence, I would affirm the district court's summary judgment ruling — a ruling that isolated and disposed of unsupported infringement claims. See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) ("One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses, and we think it should be interpreted in a way that allows it to accomplish this purpose."); see also Minkin v. Gibbons, P.C., 680 F.3d 1341, 1351 (Fed.Cir.2012). Indeed, the purpose of summary judgment is to dispose of those issues for which there is no contention as a matter of law. FED. R. CIV. P. 56(c); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
MWI discharged its burden when it presented evidence that it met Baron's noninfringement description. Baron, having made a choice to define the bounds of noninfringing activities, did not rebut MWI's summary judgment showing. Because Baron failed to point to specific ways in which accused products were capable of analysis and/or manipulation that met the claim limitations, the district court was correct to conclude that Baron did not have a credible basis to oppose the motion for summary judgment. Exigent Tech., Inc. v. Atrana Solutions, Inc., 442 F.3d 1301, 1308-09 (Fed.Cir.2006) (applying Eleventh Circuit law and holding that summary judgment is warranted when the movant has discharged its burden and there is an absence of evidence to support the nonmoving party's case); Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed.Cir.2006) (reaffirming the well-established summary judgment framework for shifting the burden of production).
Taken as a whole, I believe that the majority takes a highly selective, one-sided perspective of the record.
J.A. 23, n. 9 (emphasis in original).
Baron's efforts to dictate the trajectory of court proceedings should not have gained traction on appeal. While some districts and individual judges have elected to impose local patent rules, the district court was under no obligation to incorporate Baron's requests into the docket control order. Nor was the district court obligated to hold a Markman hearing prior to summary judgment,
I believe that the district court acted reasonably by relying on Baron's statements regarding the potential noninfringing operation of the accused products, and that such reliance negated the district court's obligation to further define terms in the asserted claims. Compare with Majority Op. 914-15, n. 13 (critiquing the district court's handling of claim construction in performing the infringement analysis). The majority's reasoning encroaches upon a district court's discretion to manage a case, and its critiques amount to appellate pronouncements on case management. The majority states that "[t]he importance of claim construction is quite evident here," Majority Op. 914-15, n. 13, an assessment that indicates how the majority would have handled the case if wearing the district court's robe. But that is not the inquiry on appeal. The issue on appeal is whether the record evidence supports the entry of summary judgment and whether the district court abused its discretion in its case management decisions.
The majority also pays significant attention to Baron's claims regarding its need for MWI's source code, yet Baron has no absolute entitlement to this discovery given its failure to demonstrate good cause as to why the source code was relevant to the alleged infringement. J.A. 164-65. I find that the source code issue is but one part of Baron's litany of unsubstantiated discovery grievances that feint towards evidence that is not in the record to divert attention from the unrebutted evidence that is in the record. E.g., Majority Op. 912-14.
The majority likewise errs in proclaiming, without confronting the salient facts in the record, that the district court "refused" to permit depositions of Mr. Fannin and Ms. Ritterbusch. Majority Op. 913-14. The actual correspondence between the parties contradicts this assertion and shows that Baron could have taken Mr. Fannin and Ms. Ritterbusch's depositions prior to the summary judgment hearing. J.A. 970-71. The parties had notice as to when the summary judgment motion would be heard and once the MWI witnesses were made available it behooved Baron to secure the testimony it needed to survive summary judgment, or at minimum to seek protective relief from the court. Instead, Baron affirmatively chose to not take depositions prior to the summary judgment hearing and to actually declare it would delay securing that testimony after the district court considered the summary judgment positions. This was a strategic choice for which it should bear the consequences. It is not our duty to repair a party's self-inflicted wounds.
While I agree that parties generally should be permitted to develop the record, obtain claim construction, and engage in discovery prior to consideration of summary judgment, a party should not be permitted to escape summary judgment through deliberate trial strategies. Barfield v. Brierton, 883 F.2d 923, 932 (11th Cir.1989) (explaining that it is within a district court's discretion to refuse to stay consideration of a motion for summary judgment "if the district court is dissatisfied with the nonmovant's explanations as
The majority adopted Baron's procedural perspective and was dismissive of the district court's role in setting the tone and schedule for case management and discovery disputes. In my view, the district court is endowed with broad discretion to decide the manner it will run a case. FED. R. CIV. P. 16; Pac. Indem. Co. v. Broward County, 465 F.2d 99, 103 (11th Cir.1972) (noting that Rule 16 "gives the trial court broad discretion in conducting pretrial procedures in order to narrow the issues, reduce the field of fact controversy for resolution, and to simplify the mechanics of the offer and receipt of evidence"); accord Rosario-Diaz v. Gonzalez, 140 F.3d 312, 315 (1st Cir.1998) ("The Civil Rules endow judges with formidable case-management authority.... In exercising this power, trial judges enjoy great latitude.") (internal citations omitted). Here, the record shows that the district court acted well within the bounds of reasonableness in denying Baron's case management and discovery requests. Cf. Vivid Tech., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803-04 (Fed.Cir.1999) (affirming a district court's decision to limit discovery as appropriate in each phase of the litigation). Because I find that the district court did not abuse its discretion and that the record supports summary judgment, I respectfully dissent.
The importance of claim construction is quite evident here. The infringement analysis in this case may very well turn on the definition and scope of terms in the asserted claims. As made clear during the summary judgment hearing, the parties dispute the scope of many claim terms and rely on their own understandings of those terms to support their infringement or noninfringement theories. And they also look to seemingly conflicting intrinsic and extrinsic evidence to support their interpretations of relevant claim terms. Claim construction would resolve the disputes between the parties and provide the legal basis for determining infringement.
In addition, after construing the terms of the asserted claims, the court can then also properly decide the relevance of whatever admissions related to noninfringement that Baron may have made during discovery or during the summary judgment hearing. Without construing relevant claim terms, however, the import of those statements — and the propriety of the parties' positions on infringement — cannot be reasonably determined with an appropriate level of clarity.
This guidance is not an "appellate pronouncement[] on case management," as the dissent sees it. Dissent at 919. It is merely recognition that the facts of this case demonstrate the necessity of construing claim terms as part of the infringement analysis.
