Judge Gorton in the District of Massachusetts recently denied an early summary judgment motion filed in a patent infringement suit, holding the motion to be premature on two grounds. First, a scheduled claim construction hearing had yet to occur, rendering a proper infringement analysis impossible. Second, material issues of fact remained regarding an estoppel claim. The decision serves as a reminder that early summary judgment motions face the same high bar in disposing of key issues and will not be allowed where material facts remain in dispute.
The case involves an intellectual property dispute between two competing desktop stapler brands. In April 2016, Amax, Inc. and Worktools, Inc. sued ACCO Brands Corp. alleging, among other things, infringement of U.S. Patent Nos. 7,178,709 and 7,748,589. After losing a motion to dismiss or transfer venue and a motion to expedite briefing and stay the case, and before the scheduled claim construction hearing, Defendant moved for summary judgment on grounds that its staplers do not infringe the ‘709 patent, and that the ‘589 patent claims were invalid under the doctrine of collateral estoppel (among other grounds).
With respect to the ‘709 patent, the court held that an infringement analysis first requires the court to determine, as a matter of law, the meaning and scope of the patent claims asserted to be infringed, before the trier of fact is able to compare the properly construed claims to the accused device. With the scheduled Markman hearing yet to be held, the court denied the motion without prejudice as premature and did not proceed further with the infringement analysis.
With respect to the ‘589 patent, the court held that the differences between the ‘589 claims and the earlier-invalidated ‘709 patent claims materially alter the question of validity when viewed in the light most favorable to the plaintiff because the patents are different in a patentably significant way. Specifically, the ‘709 patent refers to handle motion in relation to the base of a stapler, while the ‘589 patent claims refer to handle motion in relation to the body of a stapler—with the latter resulting in better leverage than that of prior art staplers.
Judge Gorton’s ruling emphasizes the need to assess the benefits and costs of motion practice before filing. A realistic appraisal of the likelihood of ending a case before trial needs to be weighed against the cost of the motion, both in terms of attorneys’ fees and goodwill with the court.
The case is Amax, Inc. et al v. ACCO Brands Corporation, 1-16-cv-10695-NMG, pending in the U.S. District Court for the District of Massachusetts. A copy of the opinion can be found here.