Canady v. Erbe Elektromedizin Gmbh

• Decision Date: 29 July 2005
• Docket Number: Civil Action No. 96-2012 (RMU).
• Citation: 384 F.Supp.2d 176
• Parties: Jerome CANADY, M.D. et al., Plaintiffs, v. ERBE ELEKTROMEDIZIN GMBH et al., Defendants.
• Court: U.S. District Court — District of Columbia

Page 176

384 F.Supp.2d 176

Jerome CANADY, M.D. et al., Plaintiffs, v. ERBE ELEKTROMEDIZIN GMBH et al., Defendants.

Civil Action No. 96-2012 (RMU).

United States District Court, District of Columbia.

July 29, 2005.

COPYRIGHT MATERIAL OMITTED

Timothy R. DeWitt, Dewitt Roggin, PLLC, Washington, DC, for Plaintiffs.

Fred E. Cowden, Jr., James M. Loots, Ford & Harrison, LLP, Virginia Anne Whitehill, Zuckerman Spaeder, LLP, Washington, DC, for Plaintiffs/Defendants.

Michael R. Weiner, Thomas J. Ramsdell, Marshall, Gerstein & Borun, LLP, Chicago, IL, Philip Gordon Hampton, Dickstein Shapiro Morin & Oshinsky LLP, Washington, DC, for Defendants.

MEMORANDUM OPINION

URBINA, District Judge.

DENYING THE PLAINTIFFS' MOTION TO STRIKE AND GRANTING THE DEFENDANTS' RENEWED MOTION FOR SUMMARY JUDGMENT

I. INTRODUCTION

This matter comes before the court as the final battle in an enduring litigation war. At issue in this patent case is whether evidence that the plaintiffs discovered after the court granted summary judgment to the defendants requires the court to modify its previous decision. Also at issue is the plaintiffs' motion to strike two declarations submitted by the defendants in support of their renewed motion for summary judgment. Because the Grund declaration is properly admitted by the defendants, the court denies the plaintiffs' motion to strike. Because the Waye declaration is only relevant to rebut the plaintiffs' improper admission of an educational videotape, which this court holds is not newly discovered evidence, the plaintiffs' motion to strike the Waye declaration is denied as moot. Because this newly discovered evidence does not alter this court's prior granting of summary judgment, the defendants' renewed motion for summary judgment is granted.

II. BACKGROUND

The instant dispute centers on U.S. Patent Number 5,207,675 ("the '675 patent"), which describes an electrosurgical device capable of facilitating blood coagulation during surgical procedures. Canady v. Erbe Elektromedizin GmbH, 271 F.Supp.2d 64, 65-66 (D.D.C.2002). The plaintiffs, Jerome Canady and Argon Electro-Surgical Corporation (collectively, "Canady" or the "plaintiffs") own the '675 patent. The defendants, a German corporation and a related American corporation (collectively, "Erbe" or the "defendants") manufacture and sell several models of a similar electrosurgical device known as an argon plasma coagulation ("APC") probe. Id. at 66.

The plaintiffs filed their complaint on August 29, 1996, seeking a declaratory judgment that Erbe's APC probe infringes on the claims of the '675 patent. Mem. Op. (dated Mar. 5, 2004) at 3. On August 5, 1997, the defendants filed counterclaims for non-infringement and invalidity. Id. On February 27, 1998, the defendants moved for summary judgment on their counterclaims, claiming that (1) the '675 patent is invalid, and (2) in any event, Erbe's APC probes do not infringe the '675 patent. Defs.' Mot. for Summ. J. at 1-4. On September 10, 1998, the court denied the defendants' motion for summary judgment on invalidity but granted the defendants' motion for summary judgment on non-infringement, holding that the APC probes did not infringe on the '675 patent. Canady v. Erbe Elektromedizin GmbH, 20 F.Supp.2d 54 (D.D.C.1998). The plaintiffs appealed from the grant of summary judgment of non-infringement to the Federal Circuit.¹ The Federal Circuit affirmed this court's decision without opinion. Canady v. Erbe Elektromedizin GmbH, 194 F.3d 1335, 1999 WL 319475 (Fed.Cir.1999).

Subsequently, the plaintiffs filed a Federal Rule of Civil Procedure 60(b) motion, seeking relief from the court's grant of summary judgment. The plaintiffs alleged that the defendants wrongfully withheld documents² that could have supplied a meritorious response to the defendants' motion for summary judgment of non-infringement. On March 31, 2000, the court granted the plaintiffs' Rule 60(b) motion, reasoning that "the information not disclosed by [the defendants] is material to the infringement issue and might have enabled [the plaintiffs] to withstand [the defendants'] motion for summary judgment of non-infringement." Mem. Op. (dated Mar. 31, 2000) at 3. The court vacated the portion of the September 10, 1998 order that granted summary judgment of non-infringement to the defendants. Id.

On June 21, 2000, the defendants requested that the Patent Trademark Office ("PTO") reexamine the '675 patent. Mem. Op. (dated Mar. 5, 2004) at 6. The PTO granted the defendants' request on September 12, 2000. Id. The court stayed the current litigation pending the completion of the PTO's reexamination. Id. In the next few years, the arena for the litigation shifted to the PTO. The PTO subsequently affirmed the patentability of the claims of the '675 patent, and this court lifted the stay on May 13, 2003. Id. at 7.

On August 2, 2004, after unsuccessful attempts at mediation and having faced an avalanche of motions, the court set a revised briefing schedule, ordering the plaintiffs to file an opposition to the defendants' original summary judgment motion, "addressing only the newly discovered evidence and how that evidence affects the court's grant of summary judgment on the defendants' non-infringement counterclaim." Minute Order (dated Aug. 2, 2004). The court permitted the defendants to file a reply to the plaintiffs' opposition, "addressing only the matters raised in their original summary judgment motion and the plaintiffs' opposition." Id. The parties have now fully briefed the defendants' renewed motion for summary judgment.

But unfortunately, the battle does not end there. On September 28, 2004, the plaintiffs filed a motion for leave to file a motion to strike two exhibits to the defendants' reply: the declarations of Karl Grund and Jerome Waye. Again, the parties fully briefed the plaintiffs' motion to file a motion to strike the Grund and Waye declarations. The court now addresses the plaintiffs' motion to strike and the defendants' renewed motion for summary judgment in turn.

III. ANALYSIS

A. The Plaintiffs' Motion to Strike

1. Legal Standard for Motion to Strike Under Rule 56

The decision to grant or deny a motion to strike is vested in the trial judge's sound discretion. Collazos-Cruz v. United States, 1997 WL 377037 at *2 (6th Cir. July 3, 1997) (citing Whitted v. Gen. Motors Corp., 58 F.3d 1200, 1203 (7th Cir.1995)); see also Cleveland v. Porca Co., 38 F.3d 289, 297 (7th Cir.1994). A court may strike all improper portions of an affidavit used to support or oppose a motion for summary judgment. FED.R.CIV.P. 56(e). Under Federal Rule of Civil Procedure 56(e), when affidavits are used to support or oppose a summary judgment motion, they "shall be made on personal knowledge, shall set forth such facts as would be admissible in evidence, and shall show affirmatively that the affiant is competent to testify to the matters stated therein." Id.; Londrigan v. Fed. Bureau of Investigation, 670 F.2d 1164, 1174 (D.C.Cir.1981) (stating that only statements in affidavits that are based on personal knowledge, rather than mere belief, will survive a motion to strike); F.S. Bowen Elec. Co. v. J.D. Hedin Constr. Co., 316 F.2d 362, 364-5 (D.C.Cir.1963) (holding that affiant must be competent to testify to the matters stated in the affidavit); Jameson v. Jameson, 176 F.2d 58, 60 (D.C.Cir.1949); see also Am. Key Corp. v. Cole Nat'l Corp., 762 F.2d 1569, 1579 (11th Cir.1985) (stating that while the information contained in affidavits should be admissible at trial, the affidavits themselves need not be admissible).

In resolving motions to strike, however, the court uses "a scalpel, not a butcher knife." Perez v. Volvo Car Corp., 247 F.3d 303, 315 (1st Cir.2001). The court will allow all properly stated facts, while only striking the improper portions. Hollander v. Am. Cyanamid Co., 172 F.3d 192, 198 (2d Cir.1999); Lee v. Nat'l Life Assurance Co. of Canada, 632 F.2d 524 (5th Cir.1980). If a party does not move to strike an improper portion of an affidavit, their objection is deemed waived. Humane Soc'y of United States v. Babbitt, 46 F.3d 93, 96-97 (D.C.Cir.1995). Moreover, the moving party bears a heavy burden as courts generally disfavor motions to strike. See generally Stabilisierungsfonds Fur Wein v. Kaiser Stuhl Wine Distribs. Pty. Ltd., 647 F.2d 200, 201 (D.C.Cir.1981) (citing 5C FED. PRAC. & PROC. 2d § 1380 at 783); accord Morse v. Weingarten, 777 F.Supp. 312, 319 (S.D.N.Y.1991); Mirshak v. Joyce, 652 F.Supp. 359, 370 (N.D.Ill.1987); Schramm v. Krischell, 84 F.R.D. 294, 299 (D.Conn.1979).

2. The Court Denies the Plaintiffs' Motion to Strike the Grund Declaration and the Waye Declaration³

The plaintiffs argue that the court should strike the Grund and Waye declarations from the record because: (1) the defendants failed to identify Grund and Waye as experts; (2) the defendants did not identify Grund and Waye as having knowledge of the probes at issue; and (3) the defendants did not identify Grund and Waye as potential witnesses in this case. See generally Pls.' Mot. to Strike. The essence of the plaintiffs' concern is unfair surprise — that they have had "no opportunity to address or challenge the purported testimony of Grund and Waye." Pls.' Reply at 1. The plaintiffs also argue that the Grund and Waye declarations are not persuasive and "do not provide support for granting Defendants' motion for summary judgment of non-infringement." Pls.' Mot. to Strike at 2.

The defendants argue that the Grund and Waye declarations rebut the plaintiffs' claim that the items of new evidence affect the court's earlier decision to grant summary judgment. Defs.' Opp'n to Mot. to Strike at 2. The defendants further argue that their reliance on the declarations is consistent with their earlier responses to interrogatories. Id.

a. The Court Denies the Plaintiffs' Motion to Strike the Waye Declaration as Moot

In their opposition to the defendants' renewed summary...