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.
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.
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 ...