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CANADY v. ERBE ELEKTROMEDIZIN GMBH

March 5, 2004.

JEROME CANADY, M.D. and ARGON ELECTRO-SURGICAL CORP., Plaintiffs,
v.
ERBE ELEKTROMEDIZIN GmbH and ERBE U.S.A., Defendants



The opinion of the court was delivered by: RICARDO URBINA, District Judge

MEMORANDUM OPINION

DENYING THE DEFENDANTS' MOTIONS TO STRIKE AND FOR ENTRY OF DEFAULT JUDGMENT; STRIKING THE PARTIES' SUMMARY-JUDGMENT SUBMISSIONS; AND SETTING A REVISED BRIEFING SCHEDULE
I. INTRODUCTION
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 Page 2 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.

  II. BACKGROUND*fn1

  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, 65-66 (D.D.C. Page 3 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 Page 4 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 Page 5 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 Page 6 [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 non-infringement").

  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 ...


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