A party to a patent suit may delay the adjudication of a summary judgment motion during discovery if it adequately explains how certain “additional discovery was relevant and essential for its opposition” to the motion.

Baron Servs. , Inc. v. Media Weather Innovations LLC, No. 2012-1285, -1443 (Fed. Cir. May 7, 2013).

The patentee alleged infringement, by a competitor, of a computerized system for weather forecasting. The alleged infringer filed affidavits from two employees disclaiming any possible infringement, and successfully moved for a protective order keeping the patentee from reviewing its own system’s source code until “a more appropriate time in the litigation.” While discovery continued, the patentee noticed depositions of the two affiants, and filed its preliminary infringement contentions. Shortly thereafter, the district court granted the alleged infringer’s motion for summary judgment and determined that any claim construction was therefore unnecessary.

The Federal Circuit vacated, holding that the grant was a premature and unwarranted abuse of discretion at such a point in the case management schedule. Under Federal Rule of Civil Procedure 56(d) and Eleventh Circuit law, the patentee had properly moved to delay the summary judgment decision, because it had not yet viewed important evidence (the source code), and had not yet been able to depose the affiants. The patentee’s motion should have been granted, rather than dismissed as moot. Irrespective of the ultimate merits of the alleged infringer’s summary judgment motion, the patentee had adequately explained its right to postpone adjudication in order to obtain additional discovery without which “it cannot present facts essential to justify its opposition.”

A copy of the opinion can be found here.