Opinion
IP 97-0434-C-M/S.
June 20, 2003.
ORDER ON PLAINTIFF'S MOTION TO COMPEL DISCOVERY MOTION UNDER FEDERAL RULE OF CIVIL PROCEDURE 56(f)
This cause is now before the Court on the plaintiff's, Charles Hill Associates, Inc. ("Hill"), motion to compel discovery and motion under Federal Rule of Civil Procedure 56(f) ("Rule 56(f)") for an enlargement of time to respond to the defendants', CompuServe, Inc. and CompuServe Interactive Services, Inc. ("CIS") (defendants collectively "CompuServe"), motion for summary judgment for noninfringement. Hill asserts that CompuServe never fully responded to several discovery requests made in late 1997 and early 1998, and that discovery should be reopened in this case so that Hill may properly respond to CompuServe's motion for summary judgment. CompuServe opposes Hill's motion and argues that Hill has waived the opportunity to seek discovery on the "constant" and "variable" data limitations in the patent in suit because he failed to raise it prior to the first round of summary judgment motions in this case, he failed to raise it in the Federal Circuit Court of Appeals, his request for rehearing was denied in the Federal Circuit. In addition, CompuServe asserts that redetermination of the scope of the "constant" and "variable" data limitations of the patent would violate either the mandate rule or the law of the case. Finally, CompuServe avers that Hill's motion to compel is unfounded.
The parties have briefed the issues and they are ripe for ruling. For the reasons stated herein, the Court DENIES Hill's motion to compel and DENIES his motion pursuant to Rule 56(f).
I. BACKGROUND
Without going into the detailed facts of the case, this cause involves the potential infringement of U.S. Patent No. 5,528,490 ("`490 patent"), owned by Hill. The patent describes an electronic catalog system and method.
On December 3, 1997, Hill served its First Request for Production of Documents from CompuServe, Inc. Pl.'s Exh. 1. On or about February 3, 1998, CompuServe, Inc., served its Response to Hill's First Request for Production of Documents. On April 2, 1998, Hill served its First Requests for Production of Documents from CIS. Pl.'s Exh. 2. On or about June 11, 1998, CIS served its Response to Hill's First Request for Production of Documents. Pl.'s Exhs. 3-5. Documents responsive to these requests were produced by CompuServe beginning on May 15, 1998, and continuing through April 28, 2000. Pl.'s Exh. 6.
On at least two occasions Hill's original counsel wrote to CompuServe's counsel requesting supplementation of production. Pl.'s Exhs. 7 8. One of the letters specifically asks for supplemental production of documents in the following four categories: a) "Documents (including e-mail messages) regarding evaluations by CompuServe of vendor mall web sites;" b) "Documents describing mall store designs and templates (from Keith Arnold's group);" c) "Documents describing how either a web server or HMI server controls use of cache on a remote computer for either the HMI or HTML mall;" and d) "Documents between CompuServe and mall merchants regarding merchant websites [sic]." Pl.'s Exh. 7, Item Nos. 19, 25, 32, 36. The other letter mentions the depositions that led Hill to think that these categories of documents needed supplementation, without referencing specific categories of information that still needed supplemented. Pl.'s Exh. 8.
CompuServe responded to these requests by letter of counsel in May and June 1998. In May 1998, CompuServe stated, in relevant part:
A cursory review of the enumerated items listed in your May 15, 1998, letter reveals that the Plaintiff is already in possession of such documents and information to the extent they exist. It is important to note that CompuServe Interactive relies on its source code revision information, if any, as documentation describing its software development efforts. Therefore, a more careful review of the source code and relevant developer manuals already produced to Plaintiff should assist you in determining how and when certain features were added to products and services.
Defs.' Exh. A. Moreover, the June 1998 letter advised Hill's counsel that all responsive documents had been produced, including a summary of which documents were responsive to which requests. Defs.' Exh. B. Apparently, some additional discovery did occur.
This Court issued its Order on claim construction for the disputed terms of the `490 patent on April 9, 1999. Included in that order were definitions for "constant data" and "variable data." On August 30, 1999, the parties filed a Joint Pre-Summary Judgment Statement. The parties filed four fully-briefed motions for summary judgment by CompuServe on December 10, 1999. Hill did not file a Rule 56(f) motion at that time. This Court issued its Order on Summary Judgment Motions on August 24, 2000, in which it granted CompuServe's motion for summary judgment of non-infringement on the basis of the absence of "storing," granted CompuServe's motion for summary judgment of non-infringement on the basis of the absence of classifying data as "constant" and "variable," denied CompuServe's motion for summary judgment on the basis of invalidity of the `490 patent, and granted CompuServe's motion for summary judgment on the basis of inducement of infringement. See Charles E. Hill Assocs., Inc. v. CompuServe, Inc., No. IP97-0434-C-M/S, 2000 WL 1473875, at * 45-46 (S.D. Ind. Aug. 24,2000) (hereinafter "Hill I").
Hill appealed this Court's judgment. On appeal, the Federal Circuit held that this Court had incorrectly construed the meaning of the term "storing" in the `490 patent, and it could not uphold summary judgment on that ground. See Charles E. Hill Assocs., Inc. v. CompuServe, Inc., Nos. 00-1562, 00-1588, 2002 WL 535806, at * 3-4 (Fed. Cir. Apr. 10, 2002) (hereinafter "Hill II"). Next, the Federal Circuit held that this Court had correctly granted summary judgment of non-infringement to CompuServe on the method claims because Hill failed to evidence a genuine issue of material fact that CompuServe's system employed the "constant" and "variable" data limitations of the `490 patent's method claims. See id. at * 6. The Federal Circuit also affirmed the Court's grant of summary judgment on induced infringement to CompuServe on the method claims. Id. at * 7. However, the Federal Circuit determined that direct application of those terms in the system claims of the `490 patent was not proper. Id. The Federal Circuit remanded the case to this Court for further construction of the system claims in light of its new definition for "storing." Id. Specifically, the Federal Circuit directed this Court "to construe the system claims and determine in light of that construction whether it should reconsider its grant of summary judgment to CompuServe on those claims." Id. Moreover, the Federal Court directed this Court to revisit the invalidity issue in light of the new definition for "storing." Id. at * 8. Hill petitioned for rehearing, which the Federal Circuit denied. See Charles E. Hill Assocs., Inc. v. CompuServe, Inc., No. 00-1562, 2002 WL 857780 (Fed. Cir. May 6, 2002) (hereinafter "Hill III").
On October 21, 2002, Bose McKinney Evans LLP entered its appearance in this action on behalf of Hill. On November 1, 2002, that counsel reiterated Hill's request that CompuServe supplement its document production by producing documents relating to: a) the "operation of the accused products and/or services"; b) any and all "website changes (e.g., initial steps, maintenance, and modification), including but not limited to, inventory, price, product descriptions, product reviews, pictures and graphics, banners or banner ads"; c) how changes to websites [sic] controlled and operated by [CompuServe] were made; and d) the conduct of "transactions or exchanges effected on [CompuServe's] web sites." Pl.'s Mot. to Compel, Exh. 9. On December 3, 2002, Hill again insisted on supplementation of production and requested "documents relating to the implementation and maintenance of not only the CompuServe website [sic], but individual merchant stores on the internal mall." Id., Exh. 10. Hill further specified this request, asking that the supplementation include: a) documents relating to www.computingshop.com and www.store.compuserve.com; b) "procedures or processes for markets to follow in updating their respective stores" maintained in connection with the mall.compuserve.com site; c) filed identified in the Merchant Work Station Cover Book produced by [CompuServe] entitled "PRCORE.DAT" and "PRSPLPCR.DAT"; and d) "additions of products or modifications of products offered on the internet mall by the various store vendors working through CompuServe." Id.
CompuServe refused to supplement discovery on the basis that discovery was closed.
Hill's counsel wrote CompuServe's counsel on December 16, 2002, reminding counsel of CompuServe's obligation to supplement discovery pursuant to Rule 26(e)(2). Id., Exh. 12.
Once this Court received notice of remand, it held a conference with counsel. On December 10, 2002, the Court determined that little additional briefing was required of the issues remanded, and set a briefing schedule. See Order on Plaintiff's Request for Case Management Plan, IP97-0434-C-M/S, Dec. 10, 2002.
Hill filed the instant motions on December 20,2002.
II. RULE 56(f) STANDARD
Rule 56(f) provides that:
Should it appear from the affidavits of a party opposing [a motion for summary judgment] that the party cannot for reasons stated present by affidavit facts essential to justify the party's opposition, the court may refuse the application for judgment or may order a continuance to permit affidavits to be obtained or depositions to be taken or discovery to be had or may make such other order as is just.
Fed. R Civ. P. 56(f). Rule 56(f) "allows a party who has no specific material contradicting his adversary's presentation to survive a summary judgment motion if he presents valid reasons justifying his failure of proof." Korf v. Ball State Univ., 726 F.2d 1222,1230 (7th Cir. 1984) (quotations and additional citation omitted). The First Circuit Court of Appeals has characterized the Rule as a "safeguard against judges swinging the summary judgment axe too hastily." Resolution Trust v. N. Bridge Assocs., 22 F.3d 1198, 1203 (1st Cir. 1994).
However, the opposition offered by the non-moving party must be meritorious. Furthermore, "Rule 56(f) is designed to minister to the vigilant, not to those who slumber upon perceptible rights." Id. Therefore, the party invoking Rule 56(f) must affirmatively demonstrate: (1) why it cannot respond to a movant's affidavits or other evidence; and (2) how postponement of a ruling on the motion will enable it, by discovery or other means, to rebut the movant's showing of the absence of a genuine issue of material fact. Korf, 726 F.2d at 1230 (quotes, emphasis and other citation omitted).
The Seventh Circuit discussed with approval the First Circuit Court of Appeals approach for evaluating Rule 56(f) motions or affidavits in Farmer v. Brennan, 81 F.3d 1444, 1450 (7th Cir. 1996) (discussing Resolution Trust, 22 F.3d at 1198). Generally, when incomplete discovery is the reason set forth in the Rule 56(f) affidavit, the party's explanation should show good cause for its failure to discover the facts sooner, "a plausible basis for believing that specified facts, susceptible of collection within a reasonable time frame, probably exist[,]" and how the pending discovery would influence the outcome of the litigation. Resolution Trust, 22 F.3d at 1203. Specifically, there are five criteria: authoritativeness, timeliness, good cause, utility, and materiality. Also relevant to the inquiry are whether "the facts needed to oppose summary judgment [are] within the exclusive control of the defendant and [whether] the incompleteness of discovery [is] the defendant's fault." Farmer, 81 F.3d at 1430 (citing Resolution Trust, 22 F.3d at 1208).
Like other discovery decisions, rulings on Rule 56(f) motions are reviewed for an abuse of discretion. See Corley v. Rosewood Care Ctr., Inc. of Peoria, 142 F.3d 1041, 1052 (7th Cir. 1998). For reversal, there must be a clear showing that the denial of discovery resulted in actual and substantial prejudice to the complaining litigant. See id. at 1053 (quotes and citations omitted).
III. DISCUSSION
Hill argues that relief under Rule 56(f) is warranted in this case because the information he still seeks from CompuServe would provide evidence of a material question of fact on the issue of the constant and variable data limitations of the `490 patent. Although the Court agrees with Hill that the discovery he seeks in his motion to compel is relevant to that issue, Hill fails to provide an explanation for why this information was not necessary to this Court's and the Federal Circuit Court's prior rulings related to that subject. In other words, Hill has presented no evidence that he could not have sought this information sooner, yet failed to do so.
The issue of whether or not CompuServe's system contains the constant and variable data limitations of the `490 patent was clearly presented to Hill upon CompuServe's first set of motions for summary judgment. Yet, Hill presented no Rule 56(f) motion to this Court at the time those motions were briefed. Moreover, although Hill presented an argument to the Federal Circuit that more discovery was needed, that court rejected his argument. See generally Hill III. Given the standard for granting relief under Rule 56(f), the Court is hard pressed to find that Hill's motion is timely. See United States v. Bob Stofer Oldsmobile-Cadillac, Inc., 766 F.2d 1147, 1152-53 (7th Cir. 1985).
Moreover, under these circumstances it appears that Hill has either waived his opportunity to argue that discovery is incomplete on the issue of the constant and variable data limitation, see Kalis v. Colgate-Palmolive Co., 231 F.3d 1049, 1058-59 1058 n. 5 (7th Cir. 2000), or the request is beyond the scope of the mandate from the Federal Circuit on remand. See Tronzo v. Biomet, Inc., 236 F.3d 1342, 1347-50 (Fed. Cir. 2001) (discussing the mandate rule and its relationship to waiver). This Court has consistently interpreted the mandate from the Federal Circuit as a narrow one. In fact, upon first review of the Federal Circuit's opinion, the Court doubted whether further briefing was necessary or appropriate on either construction of the system claims or CompuServe's motion for summary judgment. Furthermore, Hill's position opposing CompuServe's summary judgment has not changed because of the Federal Circuit's ruling. Under these circumstances, there is no reason to think that Hill did not vigorously pursue discovery prior to the first round of summary judgment motions. Allowing additional discovery now would allow Hill to reopen issues of non-infringement that have been affirmatively decided against him by the Federal Circuit. This is improper. See Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999) (discussing the issues properly considered by a district court on remand).
For these reasons, the Court DENIES Hill's motion for enlargement of time or stay pursuant to Rule 56(f) and DENIES Hill's motion to compel discovery.
IV. CONCLUSION
For the reasons stated herein, the plaintiff's, Charles E. Hill Associates, Inc., motion to compel is DENIED, and the plaintiff's, Charles E. Hill Associates, Inc., motion for enlargement of time or stay pursuant to Rule 56(f) is also DENIED.