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Partial Summary Judgment Granted on Failure to Mark Where Defendant Stipulated That Plaintiff Practiced the Patent-In-Suit

Metaswitch Networks Ltd. (“Metaswitch”) filed a motion for partial summary judgment to limit Genband US LLC’s (“Genband”) damages based on a failure to mark. In support of its motion, Metaswitch argued that partial summary judgment should be granted because: (1) Genband makes and sells products that practice the patents-in-suit, (2) Genband has not marked those products with the patent numbers, (3) these unmarked products have been sold throughout the damages period; and (4) Genband has no evidence that Metaswitch had pre-suit notice of the patents-in-suit.

Genband’s opposition did not contest any of these facts. Instead, Genband argued that Metaswitch cannot meet its summary judgment burden because Metaswitch contended that Genband does not practice the patents-in-suit. In support of this position, Genband cited to the report of Metaswitch’s expert that Metaswitch hotly contests Genband’s assertion that it practices the patents-in-suit. As a result, Genband argued there is a genuine fact dispute because a reasonable jury could credit Metaswitch’s evidence and conclude that Genband does not practice the patents-in-suit.

The district court explained: Metaswitch cites Celotex for the proposition that there is “no express or implied requirement in Rule 56 that the moving party support its motion with affidavits or other similar materials negating the opponent’s claim.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). But Genband is not arguing that Metaswitch must negate a claim. The question is whether Metaswitch has met its initial summary judgment burden: “a party seeking summary judgment always bears the initial responsibility . . . [to] demonstrate the absence of a genuine issue of material fact.” Id.

The district court found that “[t]his is a highly atypical posture on summary judgment, and neither party cites any cases with analogous fact patterns.”

Nonetheless, following the plain language of Rule 56, the district court noted that the movant must show “there is no genuine dispute as to any material fact.” Fed. R. Civ. P. 56(a). Where a material fact dispute exists, summary judgment must be denied irrespective of who raises the dispute.

During the pre-trial hearing, Metaswitch stipulated on the record that Genband practices one of the patents-in-suit. Based on that stipulation, the district court found that “there is no material fact dispute with respect to the [patent-in-suit] and partial summary judgment that Genband cannot recover pre-suit damages on the [patent-in-suit] should be GRANTED.”

Metaswitch Networks Ltd. v. Genband US LLC, et al.,
Case No. 2:14-cv-744-JRG-RSP (E.D. Tex. March 2016)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or

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