CAFC finds no adequate notice or opportunity to oppose summary judgment in MIKKELSEN GRAPHIC

MIKKELSEN GRAPHIC v Zund


As Supreme Court precedent and our own cases establish,
“patent infringement and patent validity are treated
as separate issues.” Pandrol, USA v. Airboss Ry Prods.,
Inc., 320 F.3d 1354, 1364 (Fed. Cir. 2003). A patentee’s
motion for summary judgment of infringement does not
implicitly include a motion on the issue of invalidity, and
“an alleged infringer’s failure to raise [an invalidity
defense] in opposition to a motion for summary judgment
of infringement is not a waiver [of that defense].” Id. at
1365.

Nor can the district court’s motion be sustained as a
sua sponte grant of summary judgment of no invalidity.
It is well established that a district court has “the power
to enter summary judgment sua sponte, so long as the
losing party was on notice that she had to come forward
with all of her evidence.” Int’l Vis. Corp. v. Crown Metal
Mfg. Co., 991 F.2d 768, 770 (Fed Cir. 1993) (per curiam)
(quoting Celotex Corp. v. Catrett, 477 U.S. 317, 326
(1986)); see also Fed. R. Civ. P. 56(f) (“After giving notice
and a reasonable time to respond, the court may: (1) grant
summary judgment for a nonmovant; (2) grant the motion
on grounds not raised by a party . . . ”). Thus, “if the case
is one appropriate for the entry of summary judgment, the
fact that it may be granted on a ground different from
that specified in the motion therefor does not warrant the
disturbing of the judgment on appeal.” Broderick Wood
Prods. Co. v. United States, 195 F.2d 433, 436 (10th Cir.
1952); see also, e.g., Ware v. Trailer Mart, Inc., 623 F.2d
1150, 1154 (6th Cir. 1980).
However, grants of summary judgment to a nonmoving
party are generally disfavored, because they risk
depriving a losing party of adequate notice and opportunity
to oppose summary judgment. That is why Federal
Rule 56(f) provides that district courts may enter judgment
only “[a]fter giving notice and a reasonable time to
respond.” Fed. R. Civ. P. 56(f). If the court believes a
non-moving party that has not filed a cross-motion for
summary judgment on a particular issue is nonetheless
entitled to judgment on that issue, “great care must be
exercised to assure that the original movant has had an
adequate opportunity to show that there is a genuine
issue and that the opponent is not entitled to judgment as
a matter of law.” 10A Wright & Miller, Fed. Prac. & Proc.
§ 2720, at 353–54 (1998).

If the court has “not provide[d]
the parties with adequate notice or an opportunity for
[the losing party] to present evidence and argument in
opposition to the motion,” granting summary judgment
sua sponte is inappropriate. Fin Control Sys. Pty v. Oam,
265 F.3d 1311, 1321 (Fed. Cir. 2001); see also Celotex, 477
U.S. at 326. Applying this principle, we have vacated a
grant of summary judgment of invalidity to an alleged
infringer, who had not moved for summary judgment on
that basis, because the infringer’s invalidity defenses (...)

It is also black letter law that the denial of a party’s
motion for summary judgment of invalidity is not sufficient
to justify a reciprocal grant of summary judgment of
no invalidity to the other party. “The fact that one party
fails to satisfy [its] burden on his own Rule 56 motion
does not automatically indicate that the opposing party
has satisfied his burden and should be granted summary
judgment on the other motion.” 10A Wright & Miller,
Fed. Prac. & Proc. § 2720, at 335 (1998). Our holding in
Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317,
1331–32 (Fed. Cir. 2009) is on point. In that case, patentee
Vita-Mix and alleged infringer Basic filed crossmotions
on validity. The district court denied Basic’s
motion because Basic provided “no evidence of invalidity.
For this reason the [district] court [also] granted summary
judgment of no invalidity [to Vita-Mix].” Id. at
1331. We reversed and remanded, explaining that the
district court’s assessment of the merits of Basic’s failed
motion: (...)


The outcome



Because Zund did not have adequate notice or opportunity
to oppose the district court’s grant of summary
judgment of no invalidity to MGE, we hold that summary
judgment on this issue was procedurally improper. Fed.
R. Civ. P. 56; see also Fin. Control Sys., 265 F.3d at 1321.
We therefore vacate the district court's entry of judgment
on Zund’s invalidity defenses, and remand for further
proceedings with respect to the issue of invalidity (i.e., onsale
bar, anticipation, obviousness, and indefiniteness).
See Vita-Mix, 581 F.3d at 1331–32.
CONCLUSION
In summary, we affirm the district court’s claim construction
and grant of summary judgment of infringement
to MGE. We vacate the district court’s grant of summary
judgment of no invalidity and the grant of injunctive
relief, and remand for further proceedings consistent with
this opinion.