Court Vacates Sua Sponte Summary Judgment for Lack of Due Process
November 02, 2001
Last Month at the Federal Circuit - December 2001
Judges: Clevenger (author), Mayer, and Newman (dissenting-in-part)
In Bemis Manufacturing Co. v. Dornoch Medical Systems, Inc., No. 00-1585 (Fed. Cir. Nov. 2, 2001) (nonprecedential decision), the Federal Circuit vacated a district court’s order granting SJ of noninfringement sua sponte because it failed to afford the patent owner with adequate notice and a fair opportunity to present contrary evidence. The Court affirmed, however, those portions of the lower court’s order denying partial SJ on the issues of priority of invention and inequitable conduct. The Court also vacated those portions of the order that had denied SJ on the issues of validity due to the absence of sufficient findings of fact concerning anticipation and obviousness.
In September 1998, Bemis Manufacturing Company and Eductor Partnership (collectively “Bemis”) brought suit alleging that certain products owned by Dornoch Medical Systems, Inc. (“Dornoch”) infringed four of its patents. The four patents-in-suit involved devices and methods for disposing of body fluids collected during medical procedures. Dornoch counterclaimed, asserting that each of the four patents were invalid under 35 U.S.C. §§ 102 and 103 and unenforceable due to inequitable conduct. After discovery, Bemis moved for SJ of infringement. Dornoch opposed and also moved for partial SJ of invalidity based on prior invention and unenforceability based on inequitable conduct. Two weeks before trial, the district court had advised the parties that it intended to grant SJ on the ground that Dornoch’s product did not infringe any of the asserted claims. Bemis then filed a motion requesting a Markman hearing and sought leave to file opposing evidentiary materials. Soon thereafter, the district court entered its decision and order granting SJ without ruling on Bemis’s motion.
On appeal, the Federal Circuit held that the district court had failed to comply with the procedural due-process requirements of the Seventh Circuit because a district court cannot grant SJ sua sponte unless the adverse party has been afforded proper notice and a fair opportunity to be heard. In the present case, Dornoch never moved for SJ of noninfringement. Dornoch only sought SJ as to validity based on § 102(g) and unenforceability based on inequitable conduct. Since Dornoch’s SJ motion rested upon entirely different grounds, Bemis was never properly placed on notice that the district court was going to grant SJ against it. Nor did Bemis ever have the opportunity to submit an opposition brief under Fed. R. Civ. P. 56. Instead of relying upon the issues presented in Dornoch’s motions for partial SJ, the district court had granted SJ solely on the grounds argued in Dornoch’s opposition brief. Since Bemis never had a full and fair opportunity to ventilate the issues on which the district court had ultimately granted SJ, the Federal Circuit concluded that the district court had failed to provide Bemis with proper notice and opportunity to present evidence on the issue of noninfringement.
Dissenting-in-part, Judge Newman argued that the majority opinion failed to offer any specific guidance as to why the district court’s reasoning concerning anticipation and obviousness was deficient.