Sonix Tech. Co. v. Publications Int'l, Ltd.

Decision Date08 December 2015
Docket NumberNo. 13-cv-2082,13-cv-2082
PartiesSONIX TECHNOLOGY CO., LTD., Plaintiff, v. PUBLICATIONS INTERNATIONAL, LTD., SD-X INTERACTIVE, INC., ENCYCLOPAEDIA BRITANNICA, INC., and HERFF JONES, INC. , Defendants.
CourtU.S. District Court — Northern District of Illinois
MEMORANDUM OPINION AND ORDER

AMY J. ST. EVE, District Court Judge:

Defendants Publications International, Ltd. ("PIL"), SD-X Interactive, Inc. ("SD-X"), Encyclopaedia Britannica, Inc. ("Britannica"), and Herff Jones, Inc. ("Herff Jones"), (collectively, "Defendants") have moved for summary judgment pursuant to Federal Rule of Civil Procedure 56 regarding Plaintiff Sonix Technology Co, Ltd.'s, ("Sonix's") allegation of infringement; the definiteness of the U.S. Patent No. 7,328,845("the '845 Patent") claim term "visually negligible"; and pre-suit damages. (See R.156.) For the following reasons, the Court grants in part and denies in part Defendants' summary judgment motion.

BACKGROUND
I. Northern District of Illinois Local Rule 56.1

Northern District of Illinois Local Rule 56.1 "is designed, in part, to aid the district court, 'which does not have the advantage of the parties' familiarity with the record and often cannot afford to spend the time combing the record to locate the relevant information,' in determining whether a trial is necessary." Delapaz v. Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (quoting Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 924 (7th Cir. 1994)). Local Rule 56.1(a)(3) requires the moving party to provide "a statement of material facts as to which the moving party contends there is no genuine issue." Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir. 2009) (quoting L.R. 56.1(a)(3)). The nonmoving party must file "a response to each numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon." Id. (quoting L.R. 56.1(b)(3)(B)). The nonmoving party also may submit a separate statement of additional facts that require the denial of summary judgment, including references to the affidavits, parts of the record, and other supporting materials relied upon to support those facts. See L.R. 56.1 (b)(3)(C); see also Ciomber v. Coop. Plus, Inc., 527 F.3d 635, 643-44 (7th Cir. 2008).

The purpose of Rule 56.1 statements is to identify the relevant admissible evidence supporting the material facts, not to make factual or legal arguments. See Cady v. Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) (finding Rule 56.1 statements incompliant when they fail to adequately cite the record and are filled with irrelevant information, legal arguments, and conjecture.") The Court may disregard statements and responses that do not properly cite to the record. See Cichon v. Exelon Generation Co., LLC, 401 F.3d 803, 809-810) (7th Cir. 2005.) Moreover, the requirements for responses under Local Rule 56.1 are "not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted." Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 528 (7th Cir. 2000). "[D]istrict courts are entitled to expect strict compliance with Local Rule 56.1." Raymond v. Ameritech Corp., 442 F.3d 600, 604 (7th Cir. 2006).

Defendants assert that many of Sonix's responses to Defendants' Rule 56.1 Statement of Facts are improper under Rule 56.1 and insufficient to establish genuine issues of material fact. In particular, Defendants argue that many of Sonix's responses are unsupported or unresponsive. Regarding paragraph 10, Defendants rely on their Initial Non-infringement and Invalidity Contentions in support of the statement that even though Defendants sold the Accused Products, they did not know how the dot pattern technology—created and assembled from GeneralPlus—worked. (R.189, ¶ 10.) As Defendants point out in other arguments, however, pursuant to the Local Patent Rules, Initial Non-infringement and Invalidity Contentions are inadmissible as evidence on the merits. (See LPR. 1.6, Admissibility of Disclosures.) As such, Defendants' objection to Sonix's response to this statement of fact is moot as the Court cannot consider the underlying statement for the purposes of summary judgment. See Knowles Elecs., LLC v. Analog Devices, Inc., 2012 WL 1405745, at *2, n.1 (N.D. Ill. 2012) (citing LPR 1.6) (recognizing that initial disclosures are not admissible "as evidence on the merits" while considering the disclosure for the limited purposes of jurisdiction as representative of plaintiff's allegation of infringement). Regarding paragraph 20, Defendants rely on Sonix's Final Infringement Contentions and assert that Sonix limited its infringement claims to literal infringement. (R.189, ¶ 35.) Sonix responds, without citing any evidence, that it reserved its right to assert the doctrine of equivalents "to the extent that information gathered through discovery necessitates the assertion of [the doctrine]." (R.189, ¶ 35, Sonix's Response.) Because Sonix fails to cite evidentiary support and because fact discovery has closed in the present case, the Court treats this statement as admitted. See Local Rule 56.1(b)(3)(C); Cady v. Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) (explaining that the Court may also disregard statements and responses that do not properly cite to the record). Sonix also responds to manystatements as irrelevant without citing supporting portions of the record (see R.189, ¶¶ 11-13, 15-16, 20), these facts are deemed admitted. The Court further disregards Sonix's statements that fail to provide evidentiary support for specific portions or that consist of legal argument. See N.D. Ill. L.R. 56.1(b)(3)(C); see also Tan v. City of Chicago, No. 00 C 1470, 201 WL 1012586, at *2 (N.D. Ill. Aug. 30, 2001) (ignoring statements unsupported by specific citations to the material relied upon).

Turning to Plaintiff's Statement of Facts, Sonix failed to comply with the obligation under Local Rule 56.1 for the statement of additional facts to consist of "short numbered paragraphs." See L.R. 56.1(b)(3)(C) (emphasis added). Sonix's statements contain several sentences, and consist of lengthy paragraphs that are, in at least one case, more than a page long. (See R.189, Stmt. of Addt'l Facts, ¶ 2.) Sonix's blatant non-compliance with both the letter and spirit of Local Rule 56.1 has substantially increased the Court's burden in resolving the pending motions.

II. The Parties' Objections to Declarations

In addition to the above objections to the Rule 56.1 statement of facts, Sonix objects to the declaration from Ben Wang, an algorithm engineer at GeneralPlus Technology Inc., Taiwan ("Wang Declaration"), submitted in support of summary judgment and Defendants object to the declaration from Dr. Amit Ashok, Sonix's invalidity and infringement expert ("Ashok Declaration"), submitted in support of Sonix's opposition to summary judgment.

A. Wang Declaration

The Court previously addressed the Wang Declaration when it granted in part Defendants' motion for leave to amend their final non-infringement and invalidity contentions.(See R.170.)1 Indeed, in that opinion, the Court addressed any potential prejudice to Sonix when it ruled that—despite Sonix's earlier failures to pursue discovery from GeneralPlus at any point in the litigation after repeatedly being directed there by Defendants—the Wang Declaration's late timing warranted an opportunity for Sonix to depose Mr. Wang. In doing so, the Court stated that it would not consider the Wang Declaration in connection with Defendants' summary judgment motion unless Defendants produced Mr. Wang for a deposition and provided any discoverable materials he relied upon in rendering his declaration. (See R.170, at 13.) Although Mr. Wang did not produce any materials considered—claiming that he relied only on his personal knowledge—he did sit for a deposition in Taipei, Taiwan on September 4, 2015. (R.174-2; R.190.)

Sonix repeatedly relies on the Wang Declaration in support of its opposition to summary judgment. (See e.g., R.188, at 6, 9, 10, 12-13, 20; R.189, Stmt. of Addt'l Facts, ¶¶ 4, 6-15; see also R.189, Sonix's Responses to Defs'. Stmt. of Facts, ¶ 66 (objecting to the Wang Declaration); id., ¶ 67 (relying on the Wang Declaration's disclosure that a dot pattern scheme in the products is found in the '805 Patent).) Despite this repeated reliance, however, Sonix objects to Defendants' submission of the Wang Declaration as "untimely expert opinion" in a short perfunctory paragraph. Sonix fails, however, to provide argument or analysis in support of its assertion that Mr. Wang is being presented as an expert and instead eludes to Defendants submission of the Wang Declaration as improper since it resulted in Sonix only becoming aware of GeneralPlus' testimony after the close of fact discovery and at this late stage of the litigation. (See R.188, at 20.) Putting aside the fact that the Court has already addressed this argument, it isequally unpersuasive here, given that Sonix has known since at least November 23, 2013,2 that at least some of the accused products incorporate GeneralPlus' technology and the Court provided Sonix the opportunity to depose Mr. Wang after Defendants' submitted his declaration.

Sonix further objects to the Wang Declaration based upon "Defendants' failure to cause GeneralPlus to produce a single record relied upon by Mr. Wang in direct violation of the Court's August 10, 2015 Order requiring Defendants to produce Mr. Wang for deposition and produce supporting records." (See R.188, at 20.) The Court already addressed this issue, however, in denying Sonix's motion relating to the deposition of Mr. Wang (R.172) based on GeneralPlus' representation that Mr. Wang's declaration "is based on his own personal knowledge, nothing else." (See R.175; R.174-2.) Again, Sonix fails to cite to its statement of facts or to provide the Court with evidence that Mr....

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