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Ei Du Pont De Nemours and Co. v. Heraeus Precious M S North America Conshohocken LLC

United States District Court, Ninth Circuit

June 7, 2013

E.I. DU PONT DE NEMOURS AND COMPANY, a Delaware corporation Plaintiff,
v.
HERAEUS PRECIOUS M S NORTH AMERICA CONSHOHOCKEN LLC, a Delaware corporation; and SOLARWORLD INDUSTRIES AMERICA, INC., an Oregon corporation; Defendants.

Peter E. Heuser, Devon Zastrow Newman, SCHWABE, WILLIAMSON & WYATT, P.C., Portland, OR, Matthew W. Brewer, Sean G. Gallagher, Adam K. Mortara, Asha L.I. Spencer, BARTLIT BECK HERMAN PALENCHAR & SCOTT LLP, Chicago, IL, Attorneys for Plaintiff.

Steven K. Blackhurst ATER WYNNE LLP Portland, OR, Maximillian A. Grant, Matthew J. Moore, Lisa Limor Rabie, Elizabeth M. Roesel, Gregory K. Sobolski, LATHAM & WATKINS LLP Washington, D.C., Alexander C. Johnson, Jr. MARGER JOHNSON & McCOLLOM P.C. Portland, OR, Attorneys for Defendants.

ORDER ON MOTION FOR DISCOVERY UNDER FED. R. CIV. P. 56(d) AND ON THE DEFENDANTS' MOTION FOR SUMMARY JUDGMENT

DENNIS J. JAMES HUBEL, Magistrate Judge.

The plaintiff E.I. Du Pont de NeMours and Company ("DuPont") sues the defendants Heraeus Precious M s North America Consho-hocken LLC ("Heraeus") and SolarWorld Industries America, Inc. ("SolarWorld"), alleging infringement of DuPont's patent for a conductive m lization paste used in the production of photovoltaic solar cells, U.S. Patent No. 8, 158, 504 ("the 504 Patent"). The defendants have moved for summary judgment of non-infringement, as to both literal infringement and infringement under the doctrine of equivalents ("DOE"). Dkt. #73.

Currently before the court is DuPont's motion pursuant to Federal Rule of Civil Procedure 56(d), seeking additional discovery DuPont claims is "necessary to provide a complete record to the Court for its ruling." Dkt. #86, p. 2. The defendants oppose the motion, arguing no additional discovery is necessary for DuPont to respond to their summary judgment motion, or for the court to rule on the motion. The defendants claim DuPont has admitted it does not have any claim for literal infringement, and no additional discovery is necessary because the defendants' "summary judgment motion turns on threshold legal questions" regarding applicability of the DOE. Dkt. #94, ECF p. 2.

STANDARDS

Federal Rule of Civil Procedure 56(d) provides that when a party "cannot present facts essential to justify its opposition" to a summary judgment motion, the court may take one of three actions: (1) "defer considering the motion or deny it; (2) allow time to obtain affidavits or declarations or to take discovery; or (3) issue any other appropriate order." To obtain the relief afforded by Rule 56(d), a litigant, "faced with a summary judgment motion, shows the court by affidavit or declaration that "it cannot present facts essential to justify its opposition."'" Internat'l Longshore & Warehouse Union v. Port of Portland, slip op., 2013 WL 1412882, at *10 (D. Or. Apr. 8, 2013) (Simon, J.) (quoting Michelman v. Lincoln Nat'l Life Ins. Co., 685 F.3d 887, 899 (9th Cir. 2012), in turn quoting Fed.R.Civ.P. 56(d)). "A party requesting a continuance pursuant to [former] Rule 56(f) [now 56(d)] must identify by affidavit the specific facts that further discovery would reveal, and explain why those facts would preclude summary judgment." Tatum v. City and County of San Francisco, 441 F.3d 1090, 1100 (9th Cir. 2006) (citations omitted). "[A] district court's order denying additional discovery [is reviewed] for abuse of discretion." Id.

A district court does not abuse its discretion in denying a request for additional discovery under Rule 56(d) if the party's request is "vague and the discovery sought [does] not relate to the legal issues presented on summary judgment." Demaree v. Wal-Mart Stores, Inc., slip op., 2013 WL 1037269, at *2 (9th Cir. Mar. 15, 2013).

DISCUSSION

The defendants have moved for summary judgment that Heraeus's "commercial front side photovoltaic paste products" do not infringe any claim of the 504 Patent, either literally or under the DOE. See Dkt. ## 73 & 74. DuPont's request for Rule 56(d) discovery relates to its allegation that Heraeus's "commercial products" infringe the 504 Patent under the DOE. An understanding of the defendants' opposition to the requested discovery requires a brief examination of the claims of the 504 Patent.

The 504 Patent was issued on April 17, 2012. See Dkt. #1-1. The defendants describe the 504 Patent as follows:

The patent relates to thick film conductive compositions that can be used to form electrically conductive components of semi-conductor devices, such as the m contacts on the front side (sun side) of a solar cell. Such thick film pastes contain (1) conductive m powder (such as silver or aluminum), (2) glass frit as an inorganic binder, and (3) an organic medium.... A thick film paste can be applied to a substrate, e.g., by screen-printing, and then dried and fired to form electrically conductive m contacts that form a pattern of conductor lines.... In a solar cell, these m conductor lines carry the electrical current that is generated when the silicon substrate is exposed to sunlight.

Dkt. #74, ECF pp. 6-7 (citations omitted).

The 504 Patent contains 12 claims. Claim 1 is an independent claim upon which Claims 2 through 8 depend. Claim 9 is an independent claim upon which Claim 10 depends. Claim 11 is an independent claim upon which Claim 12 depends. See Dkt. #1-1, the 504 Patent, pp. 22-23, cols. 30-32. The claims at issue in this case are the three independent claims: Claim 1, Claim 9, and Claim 11. See Honeywell Int'l, Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 995 (Fed. Cir. 2007) ("infringement of a dependent claim also entails infringement of its associated independent claim"); Lyons v. Nike, Inc., 874 F.Supp.2d 986, 1002 ...


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