United States District Court, W.D. Washington, Tacoma
ORDER ON DEFENDANT'S MOTION TO DISMISS OR MOTION
FOR SUMMARY JUDGMENT AND MOTION TO STAY PROCEEDINGS
B. Leighton, United States District Judge.
MATTER is before the Court on Defendant International
Rehabilitative Services, Inc., d/b/a RS Medical's Motion
to Dismiss or for Summary Judgment and Motion to Stay
Proceedings. Dkt. #18. Plaintiff ERMI, LLC holds a United
States Patent for a “Shoulder Extension Control
Device” (the ‘289 Patent) and sued RS Medical for
distributing an infringing “T-Rex Orbit for Shoulder
Device.” At the same time, it sued six other retailers
and Orbit's manufacturer, OneDirect Health Network, in
other jurisdictions. OneDirect then sued ERMI in the Northern
District of Georgia, seeking a Declaratory Judgment of
Non-Infringement and Invalidity of Patent.
Medical claims that it has no relationship to OneDirect and
has never sold or distributed any of its products, including
Orbit, and that it has instead been “caught in the
crossfire of a litigation campaign launched by ERMI against
its business competitors” to “sow fear,
uncertainty and doubt into the marketplace.” Dkt. #7 at
p. 6. It moved to dismiss, arguing that ERMI's original
complaint did not include facts sufficient to support the
naked allegation that it was selling an infringing product.
In response, ERMI filed an amended complaint with slightly
more facts, dropping its claims of Indirect Patent
Infringement and Willful Patent Infringement and mooting the
Motion to Dismiss. It now asserts only a Direct Patent
Infringement claim. Dkt. #15.
Medical argues that it is now entitled to summary judgment on
the amended claim because it has never sold Orbit or any
other OneDirect products, and that ERMI has not and cannot
provide any evidence demonstrating otherwise. Dkt. #18. In
the alternative, it asks the Court to defer ruling on its
pending summary judgment motion to allow ERMI to conduct only
limited, targeted discovery regarding its sale of Orbit and
its relationship with OneDirect. Dkt. #18 at p. 8.
argues that summary judgment is premature, and that it needs
time to complete “substantial” discovery into its
allegations under Rule 56(d) in order to “effectively
respond substantively” to the motion. Dkt. #17 at p. 3,
7-8. To date, its only evidence that RS Medical distributes
Orbit is a declaration and photo from an ERMI sales manager.
The photo shows an RS Medical district manager's business
card stapled to an Orbit pamphlet, which the sales manager
found in a medical center. Dkt. #15. The origin of this
pamphlet and card is unknown.
Standard of Review
judgment is proper “if 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). In determining whether an issue of fact
exists, the Court must view all evidence in the light
most favorable to the nonmoving party and draw all
reasonable inferences in that party's favor. Anderson
Liberty Lobby, Inc., 477 U.S. 242, 248-50 (1986)
(emphasis added); Bagdadi v. Nazar, 84 F.3d 1194,
1197 (9th Cir. 1996). A genuine issue of material fact exists
where there is sufficient evidence for a reasonable
factfinder to find for the nonmoving party.
Anderson, 477 U.S. at 248. The inquiry is
“whether the evidence presents a sufficient
disagreement to require submission to a jury or whether it is
so one-sided that one party must prevail as a matter of
law.” Id. at 251-52. The moving party bears
the initial burden of showing that there is no evidence which
supports an element essential to the nonmovant's claim.
Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).
Once the movant has met this burden, the nonmoving party then
must show that there is a genuine issue for trial.
Anderson, 477 U.S. at 250. If the nonmoving party
fails to establish the existence of a genuine issue of
material fact, “the moving party is entitled to
judgment as a matter of law.” Celotex Corp.,
477 U.S. at 323-24.
is no requirement that the moving party negate elements of
the non-movant's case. Lujan v. National Wildlife
Federation, 497 U.S. 871 (1990). Once the moving party
has met its burden, the non-movant must then produce concrete
evidence, without merely relying on allegations in the
pleadings, that there remain genuine factual issues.
Anderson, 477 U.S. at 248. “When the nonmoving
party relies only on its own affidavits to oppose summary
judgment, it cannot rely on conclusory allegations
unsupported by factual data to create an issue of material
fact.” Hansen v. United States, 7 F.3d 137,
138 (9th Cir. 1993). A mere “scintilla of
evidence” is also not enough; the nonmoving party must
present “evidence on which the jury could reasonably
find for the [non-moving party].” Anderson,
477 U.S. at 252. It is not required, however, for the
nonmoving party to “produce evidence in a form that
would be admissible at trial in order to avoid summary
judgment, ” only that it cannot rely on “the mere
pleadings themselves.” Celotex Corp., 477 U.S.
Federal Rule of Civil Procedure 56(d), the Court can deny or
defer a pending summary judgment motion “if the
nonmoving party has not had an opportunity to make full
discovery.” Celotex Corp., 477 U.S. at 326.
This requires the party invoking Rule 56(d) to show “by
affidavit or declaration” how “additional
discovery would preclude summary judgment and why [it] cannot
immediately provide ‘specific facts' demonstrating
a genuine issue of material fact.” Fed.R.Civ.P. 56(d);
TMJ Inc. v. Nippon Tr. Bank, 16 Fed.Appx. 795, 797
(9th Cir. 2001) (quoting Mackey v. Pioneer Nat'l
Bank, 867 F.2d 520, 523 (9th Cir. 1989)) (finding that
sworn declaration from counsel identifying required facts and
explaining the need for additional time satisfied 56(d)
requirements). While a summary judgment motion may be filed
“at any time” prior to thirty days after
discovery closes, if “a summary judgment motion is
filed so early in the litigation, before a party has had any
realistic opportunity to pursue discovery relating to its
theory of the case, district courts should grant any Rule
56[(d)] motion fairly freely.” Burlington N. Santa
Fe R. Co. v. Assiniboine & Sioux Tribes of Fort Peck
Reservation, 323 F.3d 767, 773 (9th Cir. 2003) (citing
Metabolife Int'l, Inc. v. Wornick, 264 F.3d 832,
846 (9th Cir. 2001)) (citations omitted).
Medical argues that it is entitled to summary judgment
because it has never sold any OneDirect products, including
Orbit, and that ERMI's request for substantial discovery
should be denied because “it has no facts that can
prevent summary judgment.” Dkt. #8, 18 at p. 4. It also
argues that ERMI has not met Rule 56(d) requirements of
identifying specific facts to be gained in discovery, and why
those facts would prevent summary judgment. Dkt #18 at p. 6.
In the alternative, it seeks deferral of its summary judgment
motion for 30 days to permit ERMI to conduct specific,
targeted discovery into its involvement with Orbit and
OneDirect. Dkt. #18.
attorney has testified that ERMI requires “discovery
into Defendant's claims in its declaration;
Defendant's use, sale, distribution, and offer to sell
and/or distribute the Accused Device; and Defendant's
relationship with manufacturers of the Accused Device”
before it can “effectively respond substantively”
to RS Medical's motion. Dkt. #17 Ex. 1. However, it
provides only a vague photograph linking RS Medical to Orbit
in support of its bare infringement allegation, and ...