On May 7, 2013, the U.S. Court of Appeals for the Federal Circuit decided Baron Services Inc. v. Media Weather Innovations LLC. __F.3d __ (Fed. Cir. 2013). The plaintiff-appellant, Baron Services, appealed from a district court order that awarded summary judgment of non-infringement and attorney’s fees to Media Weather Innovations. The Federal Circuit vacated the district court’s order because its ruling on the motion for summary judgment was premature.
Previously, Baron Services sued Media Weather for infringement of its patent related to computerized systems and methods for weather reporting and forecasting. After filing its complaint, Baron served Media Weather with a request for production of the source code used by the company’s accused products. Media Weather moved for a protective order to protect its source code from disclosure and the court granted the order without prejudice to Baron’s right to obtain the information at a more appropriate time.
Meanwhile, discovery continued in the case. Baron noticed the depositions of two affiants who disclaimed infringement and responded to Media Weather’s written discovery requests. Media Weather then filed a motion for summary judgment of non-infringement. It asserted that undisputed facts proved that it did not infringe Baron’s patent. In support of its motion, Media Weather submitted affidavits explaining that the accused product did not satisfy the limitations of the asserted claims in the patent.
Baron argued that summary judgment was premature under Federal Rule of Procedure 56 (d) because it had not yet had the opportunity to review Media Weather’s relevant source code. Also, according to Baron, the description of Media Weather’s programs in its provisional patent application contradicted statements in its submitted affidavits. Baron explained that it wanted the opportunity to examine the source code to determine whether Media Weather’s noninfringement arguments were correct.
The district court granted the motion for summary judgment and dismissed Baron’s outstanding motions as moot. It found that Baron had not asked for more time to complete discovery and failed to assert that additional discovery was necessary. The court also declined to construe any terms during its infringement analysis because Baron had not defined the meaning of many terms during discovery. Baron appealed the granting of summary judgment and the award of attorney’s fees to Media Weather.
On appeal, the Federal Circuit decided that the granting of summary judgment was premature pursuant to Rule 56(d). Rule 56(d) authorizes a part opposing a summary judgment motion to request that a district court delay ruling on the motion until additional discovery is obtained and without which it cannot present facts essential to justify its opposition. Courts, particularly in the Eleventh Circuit, are required to grant requests under Rule 56(d) when the party opposing summary judgment had been unable to obtain responses to his discovery requests and the discovery sought would be essential to opposing the summary judgment motion. The discovery must also be relevant to the issues presented by the motion.
In this case, Baron had requested that the court delay its summary judgment ruling until it could examine the relevant source code and conduct depositions. The company adequately explained that the discovery was relevant and essential to its opposition to Media Weather’s summary judgment motion because it would enable it to disprove the noninfringement arguments made by Media Weather in the affidavits. The source code would primarily provide Baron with the opportunity to challenge whether the accused device met the asserted claim limitations.
In sum, the Federal Circuit vacated the district court’s summary judgment ruling as well as its award of attorney’s fees and allowed the case to continue.