United States District Court for the District of Columbia
March 5, 2004.
JEROME CANADY, M.D. and ARGON ELECTRO-SURGICAL CORP., Plaintiffs,
ERBE ELEKTROMEDIZIN GmbH and ERBE U.S.A., Defendants
The opinion of the court was delivered by: RICARDO URBINA, District Judge
DENYING THE DEFENDANTS' MOTIONS TO STRIKE AND FOR
ENTRY OF DEFAULT JUDGMENT; STRIKING THE PARTIES'
SUMMARY-JUDGMENT SUBMISSIONS; AND SETTING A REVISED
This patent matter presents a textbook example of how Rambo-style
litigation tactics prevent the just and speedy determination of a case.
After the court resolved the case by granting the defendants summary
judgment on their non-infringement counterclaim, and following the
Federal Circuit's affirmance of that decision, the court granted the
plaintiffs partial relief from its summary-judgment decision under
Federal Rule of Civil Procedure 60(b) because the defendants wrongfully
withheld documentary evidence that could have affected this court's
ruling. Other intervening events, including a three-year stay of
litigation to allow for the exhaustion of reexamination proceedings with
the U.S. Patent and Trademark Office ("PTO"), also added to the complex
and torpid nature of this litigation. Nevertheless, the court attempted
to set the case on track after the reexamination proceedings concluded by
permitting the parties to re-file dispositive
motions. Now before the court are the defendants' motion to strike
the plaintiffs' answer to the defendants' non-infringement counterclaim,
the defendants' motion for entry of default judgment on that
counterclaim, and the parties' motions for summary judgment. In
recognition of the settled policies disfavoring motions to strike and
favoring adjudications on the merits, the court denies the defendants'
motions to strike and for entry of default judgment. As for the parties'
motions for summary judgment, the court strikes those motions along with
their related submissions because of the parties' repeated failure to
follow procedural rules and their demonstrated determination to
complicate the issues in an already complex case. The court does,
however, grant the parties leave to provide new briefing that secures a
just and speedy resolution of the case.
A. Factual Background
The plaintiffs own the patent-in-suit, U.S. Patent Number 5,207,675
("the 675 patent"), which describes an electrosurgical*fn2 device
capable of facilitating blood coagulation*fn3 during surgical
procedures. Canady v. Erbe Elektronedizin GmbH, 271 F. Supp.2d 64,
2002). The defendants manufacture and sell several models of a
similar electro surgical device known as an argon plasma coagulation
("APC") probe. Id. at 66.
This litigation is the result of a chance meeting of the parties at the
"Minimally Invasive Surgery Conference" held in Luxembourg in 1992. Am.
Compl. ¶¶ 10-13. At that conference, defendant Erbe Elektromedizin
GmbH ("Erbe") had a booth demonstrating a new device, the APC, to members
of the medical field. Id. Plaintiff Canady happened upon the
booth and notified defendant Erbe of his own similar invention that he
had filed with the PTO for patent on July 15, 1991. Id.
Initially, plaintiff Canady filed suit in this court claiming patent
infringement by the defendants and seeking a declaratory judgment that
the defendants' APC probes infringe the 675 patent. See
generally Compl. The defendants counterclaimed that there was no
infringement and that the 675 patent was invalid because, in certifying
the patent, the PTO allegedly failed to consider prior art that renders
the device "obvious." Defs.' Counterclaim ¶¶ 23-25. In other words,
the defendants asserted that the 675 patent amounted to nothing more than
a combination of two previous patents, Manwaring (U.S. Patent No.
5,122,138 issued June 16, 1992) and McGreevy (U.S. Patent No.
4,781,175 issued Nov. 1, 1988). Id. As the litigation
progressed, Argon-Electrosurgical Corporation joined the case as a
plaintiff when it obtained co-ownership of the 675 patent. Order dated
July 14, 1997.
B. Procedural Background
Plaintiff Canady initiated the instant action by filing his complaint
on August 29, 1996. The plaintiffs' amended complaint was filed on July
14, 1997. On August 5, 1997, the defendants filed their counterclaims for
non-infringement and invalidity. The plaintiffs did not file an answer
to the counterclaims within the 20-day period prescribed by Federal
Rule of Civil Procedure 12(a). Defs.' Mot. to Strike and to Enter Default
J. ("Defs.' Mot.") at 2, 4.
The parties offer two competing explanations for the plaintiffs'
untimely answer. According to the plaintiffs, one of their counsel, Mark
Herlihy, contacted Nate Scarpelli, a member of the defense team, to
discuss the exchange of preliminary disclosure materials in mid-August
1997. Herlihy Decl. at 2. Herlihy claims that he discussed the timing of
the plaintiffs' answer to the defendants' counterclaims and offered to
serve the answer when the parties "met to exchange preliminary disclosure
materials, unless [Scarpelli] wanted it sooner." Id. Scarpelli
apparently agreed to the timing that Herlihy suggested because he
expected the plaintiffs to "serve only a simple denial." Id. The
defendants deny that any such agreement or understanding occurred,
insisting that the plaintiffs simply neglected to abide by the filing
deadline. Defs.' Mot. at 2, 4; Defs.' Reply at 5.
At any rate, the fact remains that the plaintiffs did not file their
answer until March 10, 1998.*fn4 In the meantime, on October 2, 1997,
the court held a status conference via telephone to save travel expenses
for parties with out-of-town counsel. The defendants did not raise the
issue of the plaintiffs' untimely answer during the status conference. In
fact, the first time that the court learned of the issue was on February
27, 1998, when the defendants filed a motion for default judgment on
their counterclaims. On that same day, the defendants moved for summary
judgment on their counterclaims, asserting that the 675 patent is invalid
and that their APC probes do not
infringe the 675 patent. Defs.' Mot. for Summ. J. at 1-4. In
response, the plaintiffs filed an opposition to the defendants' motion
for default judgment on March 6, 1998. The plaintiffs did not file their
own summary-judgment motion.
On September 10, 1998, the court denied the defendants' motion for
summary judgment on patent invalidity but granted them summary judgment
as to non-infringement, holding that their APC probes did not infringe
the 675 patent. Canady v. Erbe Elektromedizin GmbH, 20 F. Supp.2d 54
(D.D.C. 1998). Consequently, the court denied as moot the
defendants' motion for default judgment. Id. Thereafter, the
plaintiffs appealed the court's partial grant of summary judgment to the
Federal Circuit.*fn5 On May 10, 1999, the Federal Circuit affirmed this
court's decision without opinion. Canady v. Erbe Elektromedizin
GmbH, 194 F.3d 1335 (Fed. Cir. 1999).
The case did not end there. On April 28, 1999, before the Federal
Circuit issued its decision, the plaintiffs returned to this court with a
Rule 60(b) motion, seeking relief from the court's partial grant of
summary judgment. Canady v. Erbe Elektromedizin Gmbh,
99 F. Supp.2d 37, 38 (D.D.C. 2000). The plaintiffs alleged that the
defendants wrongfully withheld documents that could have supplied a
meritorious response to the defendants' motion for summary judgment of
non-infringement. Id. On March 30, 2000, the court granted the
plaintiffs' Rule 60(b) motion. Id. In doing so, the court
reasoned "that the information not disclosed by
[the defendants] is material to the infringement issue and might
have enabled [the plaintiffs] to withstand [the defendants'] motion for
summary judgment of noninfringement." Id. Thus, the court
effectively resurrected the defendants' non-infringement counterclaim for
purposes of adjudication.*fn6 See id. ("vacat[ing] that portion
of its September 1998 Order which granted summary judgment of
On June 21, 2000, the defendants filed a request with the PTO for
reexamination of the 675 patent, claiming that the PTO did not have the
opportunity to consider certain prior art when rendering its decision on
plaintiff Canady's patent application. Canady, 271 F. Supp.2d
at 66-67. As a result, the court stayed the litigation pending the
completion of the PTO's reexamination. Id. at 67.
On September 12, 2000, the PTO granted the defendants' request for
reexamination after finding a "substantial new question of patentability"
affecting various claims of the 675 patent. Id. On June 24,
2001, the PTO issued an office action that rejected those claims as
Plaintiff Canady then filed a response opposing the PTO's rejection of
claims with hopes of altering the PTO's adverse decision. Id. On
September 24, 2001, the defendants filed a second request for
reexamination, pointing out two prior-art references that the PTO did not
consider during either its original examination or its first
reexamination of plaintiff Canady's patent application. Id. The
defendants uncovered six additional prior-art references shortly after
they filed their second request, thus prompting them to file a third
request for reexamination. Id. at 68. The PTO granted the
defendants' second and third requests for reexamination on November 29,
2001 after determining that the prior-art references, when combined with
other submissions in the record, "raise a substantial new question of
Meanwhile, back at the courthouse, the plaintiffs filed a motion to
lift the stay on January 11, 2002. Id. at 73. In support of
their motion, the plaintiffs argued that the defendants delayed the PTO's
ruling on the first request for reexamination by filing the two
additional requests, and that maintaining the stay presented a tactical
disadvantage to the plaintiffs in this case. Id. The court
denied the plaintiffs' motion as unripe because the plaintiffs had not
appealed the PTO's June 24, 2001 office action to the Patent Board of
Appeals and Interferences and because PTO reexamination proceedings were
still underway. Id. at 76. The court also noted that continuing
the stay would not impose a hardship on the plaintiffs because a final
decision from the PTO was expected within a matter of months.
Id. at 77.
Subsequently, the PTO affirmed the patentability of the claims of the
675 patent and concluded its reexamination proceedings. Pls.' Unopposed
Mot. to Lift Stay at 1. The plaintiffs promptly moved, without
opposition, to lift the stay. On May 13, 2003, the court lifted the stay,
thereby reigniting the litigation. With a green light now in front of
them, the plaintiffs charged
forward with a motion for summary judgment on liability, reasonable
royalty, and willfulness. Without missing a beat, the defendants filed
their own set of motions the very next day, including, inter
alia, a motion to strike the plaintiffs' answer to the
counterclaims, a second motion for the entry of default judgment, and a
renewed motion for summary judgment on non-infringement. The court now
addresses these pending motions.
A. The Defendants' Motions to Strike and for Entry of Default
The defendants ask the court to strike the plaintiffs' untimely answer
to the defendants' counterclaims and enter default judgment on those
counterclaims. Before approaching the motion for entry of default
judgment, the court turns its attention to the motion to strike.
1. The Court Denies the Defendants' Motion to Strike
The defendants served the plaintiffs with their counterclaims on August
5, 1997. Rule 12(a)(2) requires the service of an answer "within 20 days
after service" of a counterclaim. FED. R. Civ. P. 12(a)(2). The
plaintiffs served their answer on March 10, 1998, more than six months
after the 20-day period had elapsed, and after the defendants had filed
their first motion for entry of default judgment on February 27, 1998.
Defs.' Mot. at 2. The defendants therefore ask the court to strike the
plaintiffs' answer as untimely and because the plaintiffs did not bother
to move the court for either an extension of time or leave to late-file
their answer. Id. at 4.
The decision to grant or deny a motion to strike is vested in the trial
judge's sound discretion. Talbot v. Robert Matthews Distrib.
Co., 961 F.2d 654, 664-65 (7th Cir. 1992) (citing
Alvarado-Morales v. Digital Equip. Corp., 843 F.2d 613, 618 (1st
Cir. 1988)). Courts generally disfavor motions to strike, however,
because they propose a drastic remedy. Stabilisierungsfonds
Fur Wein v. Kaiser Stuhl Wine Distribs. Pty. Ltd.,
647 F.2d 200, 201 (D.C. Cir. 1981) (citing 5C FED. PRAC. & PROC.2d §
1380 at 783); Morse v. Weingarten, 777 F. Supp. 312, 319
(S.D.N.Y. 1991); Mirshak v. Joyce, 652 F. Supp. 359, 370 (N.D.
Ill. 1987); Schramm v. Krischell, 84 F.R.D. 294, 299 (D. Conn.
As mentioned earlier, the plaintiffs offer an explanation for their
belated filing. Plaintiffs' counsel Herlihy asserts that, in a telephone
call with defense counsel Scarpelli, the parties reached an understanding
that the plaintiffs would serve the defendants with an answer to the
counterclaims when the parties "met to exchange preliminary disclosure
materials." Herlihy Decl. at 2. According to Herlihy, Scarpelli stated
that "he expected [the] plaintiffs to serve only a simple denial to the
counterclaim[s]" and that Scarpelli had "no problem" with Herlihy's
suggested date of service, even though such service would occur after the
expiration of the 20-day deadline set by Rule 12(a)(2). Id.
Herlihy claims that "several additional conversations occurred" in which
Scarpelli made no mention of the forthcoming answer, leading Herlihy to
believe that the two "had an explicit understanding that no issue would
be raised regarding the timing" of the answer. Id. The
defendants offer another version of the story: they vehemently deny that
any such understanding took shape. Defs.' Reply at 5.
The defendants filed and served their counterclaims on August 5, 1997.
Defs Mot. at 2. According to Rule 12(a)(2), the plaintiffs had to serve
their answer to the counterclaims on or about August 25, 1997. FED. R.
CIV. P. 12(a)(2). It is therefore undisputed that the plaintiffs missed
the deadline by more than six months when they filed their answer in
March 1998. Pls.' Opp'n at 2. As a result, the court may exercise its
discretion to grant the defendants' motion to strike. See Cobell v.
Norton, 213 F.R.D. 42 (D.D.C. 2003) (Lamberth, J.) (granting a
strike an untimely filing because "it is only fair to require all
parties to the present case to comply with the Federal Rules of Civil
Procedure and Local Rules"); Shapiro, Lifschitz & Shram, P.C. v.
R.E. Hazard, Jr. Ltd. P'shp, 90 F. Supp.2d 15, 17-18 (D.D.C. 2000)
(Harris, J.) (striking an affidavit as untimely). But if the court were
to rule in favor of the defendants, where would that leave the court and
the parties? The answer to this question provides the guiding force for
the court's decision.
The defendants would like to strike the plaintiffs' answer so that the
court can declare the plaintiffs in default and proceed toward default
judgment. Such a result, however, would contravene the established
policies disfavoring motions to strike, Stabilisierungsfonds Fur
Wein, 647 F.2d at 201, and favoring the resolution of cases on their
merits. See Jackson v. Beech, 636 F.2d 831, 835 (D.C. Cir. 1980)
(emphasizing that courts "strongly favor resolution of disputes on their
merits" and "it seems inherently unfair to . . . enter judgment as a
penalty for filing delays" (internal quotations omitted)). The court
therefore denies the defendants' motion to strike and moves on to address
the defendants' motion for default judgment.
2. The Court Denies the Defendants' Motion for Default Judgment
Now that the court has ruled against the defendants' motion to strike,
the plaintiffs' answer to the counterclaims prevents the application of
default judgment. Consequently, the defendants' motion for the entry of
default judgment can be summed up in one word: moot. This outcome finds
support in the court's prior ruling, which denied the defendants' prior
motion for default judgment as moot. Canady, 20 F. Supp.2d 54.
Even if the court were to strike the plaintiffs' answer, the court
still would not be in a position to grant the defendants default judgment
in light of the absence of an entry of default.
Indeed, a fatal flaw with the defendants' approach is their
blindness to the two-step process calling for the entry of default,
followed by the entry of default judgment. FED. R. CIV. P. 55; Eitel
v. McCool, 782 F.2d 1470, 1471 (9th Cir. 1986); Meehan v.
Snow, 652 F.2d 274, 276 (2d Cir. 1981); see also 10A FED.
PRAC. & PROC. CIV.3d § 2682 (stating that "[p]rior to obtaining a
default judgment under either Rule 55(b)(1) or Rule 55(b)(2), there must
be an entry of default as provided by Rule 55(a)"). The defendants failed
to implement the first step by asking the Clerk of the Court to enter
default against the plaintiffs. Thus, under this alternate theory, the
defendants are in no position to apply for the entry of default judgment.
Assuming arguendo that the defendants' motion is justiciable,
the court would nevertheless be reluctant to trigger the default
mechanism in this case. The D.C. Circuit recently confirmed its
preference for an adjudication on the merits and a corresponding disfavor
for resolving litigation by default. English-Speaking Union v.
Johnson, 353 F.3d 1013, _, 2004 U.S. App. LEXIS 689, at *16 (D.C.
Cir. Jan. 16, 2004) (citing Shepherd v. Am. Broad. Cos.,
62 F.3d 1469, 1475 (D.C. Cir. 1995)); accord Whelan v. Abell,
48 F.3d 1247, 1258 (D.C. Cir. 1995) (reiterating "the federal policy favoring
trial over default judgment" (citation omitted)); Jackson, 636
F.2d at 835 (discussing the "strong policies favoring the resolution of
genuine disputes on their merits" (citations omitted)). This line of
reasoning rhymes with the Federal Rules of Civil Procedure, which
generally embody an effort to ensure that courts decide cases based on
the strength of the adversaries' arguments rather than on the skillful
use of technicalities. See Foman v. Davis, 371 U.S. 178, 181-82
(1962) (explaining that "[i]t is too late in the day and entirely
contrary to the spirit of the Federal Rules of Civil Procedure for
decisions on the merits to be avoided on the basis of  mere
technicalities"). The court therefore declines the defendants'
invitation to play "a game of skill in which one misstep by counsel
may be decisive to the outcome," accepting instead the well-founded
precept disfavoring default judgments. Id. (citing Conley v.
Gibson, 355 U.S. 41, 48 (1957)); English-Speaking Union,
353 F.3d at_, 2004 U.S. App. LEXIS 689, at *16; Shepherd, 62
F.3d at 1475; Whelan, 48 F.3d at 1258; Jackson, 636
F.2d at 835. Accordingly, the court denies the defendants' motion.
B. The Court Strikes the Parties' Motions for Summary Judgment
and Related Briefing
As its labyrinthine history suggests, this case has moved beyond the
complex due in great part to the parties' failure to comply with the
court's standards and local rules in briefing their summary-judgment
motions. For example, the defendants' response to the plaintiffs' Local
Civil Rule 7(h) statement of undisputed material facts is 64 pages long,
nearly 20 pages in excess of Local Civil Rule 7(e)'s 45-page limitation,
never mind the fact that the court's order directing the
parties to submit abridged summary-judgment briefs never permitted
such a response.*fn7 LCvR 7(e); Order dated May 13, 2003. Furthermore,
while the defendants insist that the plaintiffs' Rule 7(h) statement does
not conform with that rule's requirements, the defendants fail to
recognize that they too have violated the rule by failing to provide the
court with "a separate concise statement of genuine issues" with respect
to the plaintiffs' summary-judgment motion.*fn8 LCvR 7(h); Defs.' Resp.
to Pls.' Rule 7(h) Statement of Material Facts. This push-and-pull method
advocacy has no value and is reminiscent of the age-old adage:
"first take the log out of your own eye, and then you will see clearly to
take out the speck that is in your brother's eye." Luke 6:42 (NASB);
see also In re Conard, 944 S.W.2d 191, 193 (Mo. 1997)
(regretting that each party "saw the speck in the other's eye, [but]
failed to see the log in his own"); Wooddy v. Mudd,
265 A.2d 458, 466-67 (Md. 1970) (citing to the Gospel of Matthew in
recognition that "most human beings have a tendency to see the shortcomings
of others rather than their own shortcomings").
The parade of follies does not end there. To wit, the parties have
extensively presented new matters in their respective reply briefs.
See Natural Res. Def. Council v. Envtl. Prot. Agency,
25 F.3d 1063, 1072 n.4 (D.C. Cir. 1994) (requiring parties to raise all of
their arguments in their opening briefs to prevent "sandbagging" and to
provide opposing counsel the chance to respond). For instance, the
defendants' reply in support of their renewed motion for summary judgment
attaches a half-dozen new exhibits, including a videotape and a CD-ROM. In
turn, the plaintiffs' reply in support of their own motion for summary
judgment comes fully loaded with 13 new exhibits. The inclusion of new
matters in the reply briefs has inspired at least some of the parties to
seek leave to file a sur-reply. E.g., Defs.' Mot. for Leave to File
Sur-reply. To provide a further glimpse into the aggressive nature of
this litigation, the court notes that the defendants' proposed sur-reply
itself contains new matters and additional exhibits, potentially calling
for the plaintiffs to submit a response to the sur-reply.
This extraordinarily lengthy chain of briefing demonstrates the very
real and frightening possibility that the parties seek to spin this
litigation into a rolling snowball that continues to grow without an end
in sight. The parties' failure to follow a normal chain of briefing
i.e., motion, opposition, and reply adds confusion where
clarity is needed, wastes judicial resources, and
subjects the case to needless delay. So that the court may rule
intelligently in this complex patent case, the parties must place their
best arguments and supportive evidence in their opening briefs rather
than selectively discussing some of their points in opening briefs while
reserving other missives for closing briefs. Natural Res. Def.
Council, 25 F.3d at 1072 n.4; Corson & Gruman Co. v. Nat'l
Labor Relations Bd., 899 F.2d 47, 50 n.4 (D.C. Cir. 1990).
Accordingly, in an effort to tame this tempestuous litigation, the court
strikes the parties' summary-judgment submissions and sets a streamlined
briefing schedule to permit the parties an opportunity to re-brief their
positions in a manner that simplifies the issues remaining for
adjudication. See Sani-Top, Inc. v. N. Am. Aviation, Inc.,
261 F.2d 342, 343 (9th Cir. 1958) (stressing the importance of courts having
"a full record" before proceeding with rulings rather than being
"supplied [facts]. . . and piecemeal snatches of the record");
Divane v. Krull Elec. Co., Inc., 2002 U.S. Dist. LEXIS 24333, at
*3 (N.D. Ill. Dec. 18, 2002) (disapproving of piecemeal fashion of
briefing a motion) Am. Directory Serv. Agency, Inc. v. Beam,
1988 U.S. Dist. LEXIS 18520, at *2-3 (D.D.C. June 20, 1988) (Pratt, J.);
Gowdish v. Eaton Corp., 1981 U.S. Dist. LEXIS 11470, at *5-6
(M.D.N.C. Mar. 2, 1981) (noting that "[p]iecemeal supplementation . . .
is not a practice that the [c]ourt desires to encourage").
C. The Court Clarifies the Scope of the Briefing
If the parties submit new briefing, they must stay within set
boundaries. The court initially granted the defendants summary judgment
on the non-infringement counterclaim and denied summary judgment on their
invalidity counterclaim. Canady, 20 F. Supp.2d 54. As noted,
however, the plaintiffs later sought and won relief from "that portion of
[the]. . . Order which granted summary judgment of
non-infringement" because the defendants had wrongfully withheld
documents that could have "enabled Canady to withstand Erbe's
motion for summary judgment of non-infringement."
Canady, 99 F. Supp.2d at 38 (emphasis added). Accordingly, the
court left untouched the other portions of its original opinion unrelated
to the defendants' non-infringement counterclaim. Id.
In light of the limited scope of the relief from judgment, the parties'
immediate focus for summary-judgment should be the defendants'
non-infringement counterclaim. Accordingly, the court allows the
plaintiffs to file an opposition to the defendants' original motion for
summary judgment addressing only the newly discovered evidence and
whether that evidence affects the court's original grant of summary
judgment on the defendants' non-infringement counterclaim. In turn, the
defendants may file a reply without raising new matters. In the event
that the court denies summary judgment on the non-infringement
counterclaim, the court will provide guidance to the parties on how to
proceed with the case.
For the foregoing reasons, the court denies the defendants' motions to
strike and for entry of default judgment, strikes the parties' briefing
on summary judgment, and sets a revised briefing schedule. An order
directing the parties in a manner consistent with this Memorandum Opinion
is separately and contemporaneously issued this 5th day of