Minemyer v. B-roc Representatives Inc

• Decision Date: 27 October 2009
• Docket Number: No. 07 C 1763.,07 C 1763.
• Citation: 695 F.Supp.2d 797
• Parties: John T. ("Tom") MINEMYER, Plaintiffs, v. B-ROC REPRESENTATIVES, INC., et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

695 F.Supp.2d 797

John T. ("Tom") MINEMYER, Plaintiffs,

v.B-ROC REPRESENTATIVES, INC., et al., Defendants.

No. 07 C 1763.

United States District Court

N.D. Illinois

Eastern Division.

Oct. 27, 2009.

COPYRIGHT MATERIAL OMITTED

Eugene Frederic Friedman, Gail Tuler Friedman, Friedman & Friedman, Ltd., Douglas Mason Chalmers, Douglas M. Chalmers P.C., Chicago, IL, for Plaintiffs.

Paul K. Vickrey, Anna B. Folgers, Matthew G. McAndrews, Nicholas M. Dudziak, Niro, Scavone, Haller & Niro, Ltd., Natalie J. Spears, Jacque Pierre McCray, Son-nenschein, Nath & Rosenthal, LLP, Chicago, IL, Adam C. Rehm, Bryan P. Stanley, Matthew L. Faul, Teresa Ann Ascencio, Sonnenschein Nath & Rosenthal LLP, Kansas City, MO, for Defendants.

MEMORANDUM OPINION AND ORDER

JEFFREY COLE, United States Magistrate Judge.

The plaintiff filed for a patent on a plastic pipe coupler—Patent No. 6, 851, 726 ("726 patent")—on August 23, 1999. It's a short length of sturdy plastic tube, with threads spiraling their way from both ends toward the center—think jar lid, with the lid being one end of the coupler and the pipe being the jar. In the center, there is a stop so that the pipes being connected wouldn't actually touch. It's difficult to imagine there was anything new under the sun in pipe connecting by 1999, but it seems the salient feature of the plaintiffs coupler was the fact that the threads were shallow at the ends and became deeper as they worked into the center. The parties refer to them as "tapered threads." Perhaps the slight "funnel shape" to the ridge of thread makes it easier for the coupler to accept the pipe to be connected, the connection becoming gradually tighter and more secure the closer the pipe gets to the center stop. In any event, that's the significant feature of the patent for the purposes of this motion, the defendants' motion for summary judgment as to the invalidity of the 726 Patent. Plaintiff sued the defendants for infringing his patent, and invalidity is one of their defenses.

According to the defendants, the plaintiff offered his product for sale more than a year before he filed. A patent is invalid under the on-sale bar of 35 U.S.C. § 102(b) if, prior to the critical date, the invention was ready for patenting and was the subject of a commercial sale or offer for sale. Pfaff v. Wells Electronics Inc., 525 U.S. 55, 67, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998); In re Cygnus Telecommunications Technology, LLC, Patent Litigation, 536 F.3d 1343, 1353 (Fed.Cir.2008). De- fendants also argue that another party had a similar device on the market prior to that time as well, thereby invalidating the plaintiff's patent under the public use bar of 35 U.S.C. § 102(b). Zenith Electronics Corp. v. PDI Communication Systems, Inc., 522 F.3d 1348, 1356 (Fed.Cir.2008). Finally, the defendants submit that the patent is invalid for obviousness under 35 U.S.C. § 103. Plaintiff disputes that there was any offer for sale and submits that, even if there were, he is entitled to an earlier priority date—August 25, 1997— based on his provisional patent application. He disputes the other two arguments as well, for technical reasons.

I.SUMMARY JUDGMENT

A.The Federal Rule of Civil Procedure and the Applicable Case Law

Summary judgment is appropriate where "the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). The moving party bears the initial burden to demonstrate their entitlement to summary judgment, Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When considering a motion for summary judgment, the nonmoving party's evidence " 'is to be believed, and all justifiable inferences are to be drawn in [that party's] favor.'" Hunt v. Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 143 L.Ed.2d 731 (1999). Credibility determination must be left for the fact-finder. Hunt, 526 U.S. at 552, 119 S.Ct. 1545.

But this favor toward the nonmoving party does not extend to drawing "[i]nfer-ences that are supported by only speculation or conjecture." Fischer v. Avanade, Inc., 519 F.3d 393, 401 (7th Cir.2008). The nonmoving party "must do more than raise some metaphysical doubt as to the material facts; [she] must come forward with specific facts showing that there is a genuine issue for trial." Keri v. Board of Trustees of Purdue University, 458 F.3d 620, 628 (7th Cir.2006). Where the nonmoving party bears the burden of proof at trial, he must present specific facts showing a genuine issue to survive summary judgment. Celotex Corp. v. Catrett, 477 U.S. 317, 323-24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Ortiz v. John O. Butler Co., 94 F.3d 1121, 1124 (7th Cir.1996) ("If the nonmoving party fails to establish the existence of an element essential to his case, one on which he would bear the burden of proof at trial, summary judgment must be granted to the moving party."). A genuine issue of material fact exists, precluding summary judgment, "only if sufficient evidence favoring the nonmoving party exists to permit a jury to return a verdict for that party." Sides v. City of Champaign, 496 F.3d 820, 826 (7th Cir.2007) (citation omitted).

B.Summary Judgment Under the Local Rules

As always, the facts underlying this summary judgment proceeding are drawn from the parties' Local Rule 56.1 submissions.¹ Local Rule 56.1 requires a party seeking summary judgment to include with its motion "a statement of material facts as to which the... party contends there is no genuine issue and that entitle the... party to a judgment as a matter of law." Local Rule 56.1(a)(3); Ciomber v. Coopera- tive Plus, Inc., 527 F.3d 635, 643 (7th Cir.2008). Each paragraph must refer to the "affidavits, parts of the record, and other supporting materials" that substantiate the asserted facts. Local Rule 56.1(a)(3); F.T.C. v. Bay Area Business Council, Inc., 423 F.3d 627, 633 (7th Cir. 2005) The party opposing summary judgment must then respond to the movant's statement of proposed material facts; that response must contain both "a response to each numbered paragraph in the moving party's statement," Local Rule 56.1(b)(3)(B), and a separate statement "consisting of short numbered paragraphs, of any additional facts that require the denial of summary judgment," Local Rule 56.1(b)(3)(C); Ciomber, 527 F.3d at 643. Again, each response, and each asserted fact, must be supported with a reference to the record. Local Rule 56.1(b)(3)(B); Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir.2009); Bay Area Business Council, Inc., 423 F.3d at 633.

If the moving party fails to comply with the rule, the motion can be denied without further consideration. Local Rule 56.1(a)(3); Smith v. Lamz, 321 F.3d 680, 682 n. 1 (7th Cir.2003). If the responding parting fails to comply, its additional facts may be ignored, and the properly supported facts asserted in the moving parry's submission are deemed admitted. Local Rule 56.1(b)(3)(C); Montana v. City of Chicago, 535 F.3d 558, 569 (7th Cir.2008); Cracco, 559 F.3d at 632; Cady v. Sheahan, 467 F.3d 1057, 1061 (7th Cir.2006). District courts are " 'entitled to expect strict compliance'" with Rule 56.1, and do not abuse their discretion when they opt to disregard facts presented in a manner that does follow the rule's instructions. Cracco, 559 F.3d at 632; Ciomber, 527 F.3d at 643; Amnions v. Aramark Unif. Servs., Inc., 368 F.3d 809, 817 (7th Cir.2004).

The local rule governing summary judgment proceedings has been in effect for over two decades. Nonetheless, complaints about their perceived rigor, Bell, Boyd & Lloyd v. Tapy, 896 F.2d 1101, 1103 (7th Cir.1990), or their very necessity, Schulz v. Serfilco, Ltd., 965 F.2d 516, 519 (7th Cir.1992), continue to be heard. Too often, the rules are overlooked or worse, ignored, leaving it for the court to sift through the evidence largely unaided. Waldridge v. American Hoechst Corp., 24 F.3d 918, 922 (7th Cir.1994). But the Seventh Circuit has been adamant that that is not the appropriate role for a court either in the Court of Appeals, United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.1991); Alexander v. City of South Bend, 433 F.3d 550, 552 (7th Cir.2006), nor in the District Court. Indeed, the Seventh Circuit has approved of local rules like Local Rule 56 because they make the district court's task more efficient. Chelios v. Heavener, 520 F.3d 678, 687 (7th Cir.2008); Waldridge, 24 F.3d at 922, That is especially true in complex cases such as patent cases where the court does not have the advantage of the parties' familiarity with the record. Waldridge, 24 F.3d at 923-24.

Local Rules like Local Rule 56 serves a more important purpose in ensuring that the adversary system functions as it should. Herman v. City of Chicago, 870 F.2d 400, 404 (7th Cir.1989). A court does a disservice to the system, and to one party when it assists the other party in the presentation of its case. Indeed, the Seventh Circuit has cautioned against going beyond the parties' presentations. See Hartmann v. Prudential Ins. Co., 9 F.3d 1207, 1214 (7th Cir.1993); Weissman v. Weener, 12 F.3d 84, 86 (7th Cir.1993). "The benefit of adversarial presentation is a major reason why judges should respond to the parties' arguments rather than going off independently." Kay v. Board of Educ. of City of Chicago, 547 F.3d 736, 738 (7th Cir.2008) (Easterbrook, C.J.). See also WWC Holding Co., Inc. v. Sopkin, 488 F.3d 1262, 1279-1280 (10th Cir.2007) (Gor-such, J., dissenting).

Even if a judge were to endeavor to assist both sides, it could never do so equally, and some unfairness would result. The Federal Circuit has quoted with approval Judge Kleinfeld of the Ninth Circuit:

... requiring the district court to search the entire record, even though the adverse party's response does not set out the specific facts or disclose where in the record the evidence for them can...