# United States **Court of Appeals**  **for the Federal Circuit**

______________________

BARON SERVICES, INC., Plaintiff

- Appellant,

v.

MEDIA WEATHER INNOVATIONS LLC, Defendant

- Appellee.

______________________

2012

- 1285

, - 1443

______________________

Appeal from the United States District Court for the
Northern District of Alabama in No. 11

- CV

- 1606, Judge Inge Prytz Johnson.

______________________

Decided: May 7, 2013

______________________

J EFFREY T. K ELLY , Lanier Ford Shaver & Payne, PC,
of Huntsvi lle, Alabama, argued for plaintiff

- appellant.
With him on the brief was J.R. B ROOKS

.

S TUART N. B ENNETT , Jones & Keller, P.C., of Denver, Colorado, argued for defendant

- appellee. With him on the
brief was P ERRY L

. G LANTZ , of Greenwood Village, Color ado

.

______________________BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 2

Before D YK
, P ROST

, and R EYNA

, Circuit Judges.

Opinion for the court filed by Circuit Judge P ROST

.

Dissenting opinion filed by Circuit Judge R EYNA

.
P ROST

, Circuit Judge

. Baron Services, Inc., (“Baron”) appeals the orders of
the United States District Court for the Northern District of Alabama awarding summary judgment of noninfring ement and attorney’s fees to Media Weather Innovations, LLC (“MWI”). Because the district court’s summary judgment order was premature, we vacate the court’s summary judgment and award of attorney’s fees and remand for further proceedings consistent with this opinion.

I. B ACKGROUND

Baron owns U.S. Patent N o. 6,490,525 ( “’525 patent”),
which “ge nerally relates to systems and methods for weather reporting and forecasting, and more particularly, to computerized systems and methods for reporting and forecasting real

- time weather information.” ’525 patent
col. 1 ll. 19

- 22. In May 2011, Baron filed a civil action alleging that MWI’s WeatherCall programs infringed the

’ 525 p atent. The schedule for the case was set by the district court in an order that, among other deadlines, set discovery to end on July 13, 2012

. The order did not, however, set a timetable for Markman proceedings or for exchanging invalidity or infringement contentions

. 1

1 Baron later informed the district court that it b elieved at the time that the parties would work out the deadlines for those additional terms while proceeding with fact discovery. Transcript of Summary Judgmen t Hearing, Jan. 24, 2012, District Court Docket Entry (“D.E.”) 47 at 65

- 75.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 3

About two months after filing its complaint, Baron
served MWI with a request for production of the source code used by the WeatherCall products. Instead of pr oducing the requested code, however, MWI moved the

court for a protective order. 2 MWI asserted that, “[b]ecause the Patent

- in

- Suit claims no computer

- code

based invention, MWI’s computer source code is not even potentially relevant to this case .” J.A. 126

. In support of
its motion, MWI submitted affidavits from Michael Fa nnin, an employee of MWI, and from Valerie Ritterbusch, the President of MWI and a former employee of Baron. Those affidavits explained that the “means” by which the accused products send information from National Weat her Service (“NWS”) alerts to MWI’s customers is “ acco mplished through computer source code

, ” but there are
“numerous other terms and concepts in the 525 P atent

. . . which also distinguish [MWI’s] Computer Source
Code

. . . from the 525 Patent

. ” J.A 138, 141

. In response to MWI’s motion, Baron explained that the ’525 patent specifically discloses an invention that uses a special purpose computer to execute “computer code” and that the “logic” recited in several claims “IS the source code.” J.A.

151

- 52 ; see ’525 patent col. 5 ll. 4

- 5. According to Baron,
MWI’s source code was therefore relevant to the asserted method, apparatus, and system claims because MWI’s affiants clearly established that MWI’s accused products
were i mplemented through a computer by MWI’s source code

. On October 4, 2011, the district court granted MWI’s motion to protect its source code from disclosure “without prejudice to [Baron] ’ s right to seek said information at a more appropriate time in the li tigation. ” J.A. 166. The

2 MWI’s motion came after the court entered a stipulated protective order that permitted the parties to protect the confidentiality of discovery productions.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 4

court held that it could not determine “if the source code
is relevant to the issues in this action” because Baron “failed to plead in what manner [MWI] is alleged to be infringing.” J. A

. 164.

After the court’s decision, the parties continued to pr oceed with discovery. Relevant here, Baron noticed depos itions of Ritterbusch and Fannin, 3 and MWI served Baron
with numerous written discovery requests. Included among those requests were demands for Baron to define
certain terms in the ’525 p atent and to detail how MWI’s products used or incorporated the invention claimed in the ’525 patent.

On the day Baron’s responses to MWI’s discovery r equests were due, November 21, 201 1, Baron moved the district court to “improve the efficiency and orderliness of th[e] case” by setting a Markman hearing and adopting the Patent Rules that were in use by another judge in the Northern District of Alabama. J.A. 172. With its motion, Baron included a proposed schedule detailing a timetable
for disclosures and joint filings relating to infringement contentions, validity contentions, and Markman procee dings. In addition, Baron moved the court to enter “an order staying Baron’s obligations to respond to certain of MWI’s Discovery Requests, as expl icitly set forth in the Patent Rules, until the applicable dates set forth in [Ba ron’s proposed schedule].” J.A. 174.

On the same day Baron filed its motion, it served tim ely responses to MWI’s written discovery requests. In

3 Although noticed on November 1, 2011, MWI a ppears to have not agreed to move forward with the depos itions until January 7, 2012

. See D.E. 38

- 5 at 2; 40

- 7 at 3. It appears from the record that those depositions were scheduled to take place in mid

- February 2012. D.E. 40 -7

at 1.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 5

those answers, Baron object ed to defining claim terms as premature in light of the schedule that Baron proposed for the court to adopt. 4 As promised in those responses,
Baron subsequently served its “Disclosure of Asserted
Claims and Preli minary Infringement Contentions ” on Decembe r 8, 2011 . Those contentions detailed how Baron believed MWI’s products m et the limitations of each
asserted claim. Baron then renewed its request to MWI
for access to source code.

On December 27, 2011, MWI filed a motion for su mmary judgment of noninfringement. MWI argued that undisputed facts proved that it did not infringe the ’525 patent. According to MWI, “[t]he only service that MWI
offers its subscribers is to forward Nati onal Weather Service warnings,” “Baron admits that warnings issued by
the National Weather Service do not infringe any claim of the ‘525 Patent, ” and “Baron has therefore admitted that
MWI’s services do not infrin ge any claim of the ‘525
Patent .” J.A. 4 70

- 71. In support of its motion, MWI
submitted a new affidavit by Valerie Ritterbusch in which she explained why the accused products did not satisfy the limitations of the asserted claims given her unde rstanding of certain claim terms in the ’525 patent.

Baron filed a timely response to MWI’s motion for summary judgment and p rovided the district court with several documents produced by MWI during discovery. Citing Federal Rule of Civil Procedure 56(d)

, Baron a r4 Baron also included the following response to one of MWI’s requests for admission. “ Baron is without
sufficient information to know how the Court will define, if appropriate, ‘storm profile’ or ‘ National Weather Service warning ’ . . . . Baron admits that information from the
National Weat her Service alone, including a ‘ warning ’

, does not in fringe the ’ 525 Patent. ” J. A

. 380.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 6

gued that summary judgment was premature because the court had not yet constr ued the terms of the ’525 patent,
becaus e it had not yet had the opportunity to review MWI’s relevant source code, and because it had yet to depose Ritterbusch and Fannin. Pointing to a provisional patent application filed by MWI for the accused products, Baron also argued that there was a genu ine dispute concerning the material fact whether the accused pro ducts “analyzed” weather data from the N WS . According

to Baron , the description of MWI’s WeatherCall programs in the provisional application contradict ed the statements in the affidavits submitted by MWI.

After responding to MWI’s motion for summary jud gment, Baron filed a motion to compel production of MWI’s
source code . Baron asserted its infringement contentions clearly demonstrated the relevancy of t he code, but MWI continued to refuse repeated requests to produce it.
W ithout the source code, Baron argued, “[it] and the Court will simply have to rely on MWI’s word as to how its products function without any ability to test, through expert review of t he source code, whether MWI’s stat ements are accurate or inaccurate.” J.A. 755.

On January 24, 2012, the court h eld a hearing to a ddress MWI’s summary judgment motion and Baron’s outstanding motions. At the hearing, Baron reiterated its argument that s ummary judgment was premature and
unwarranted. Baron discussed the details of the MWI’s provisional patent application, including how it believed the document revealed that MWI’s WeatherCall products analyze “the [NWS] alert type, time of the alert, and t he geographic area affected by the alert .

. . in the same way that is taught by the patent.” D.E. 47 at 19. Baron also explained how an infringement analysis would turn on the construction of key terms in the asserted claims: “[MWI] say[s] in their res ponse, well, we don’t use a geographic area, but they say right here [in its provisional patent application] that they do use a geographic area,”BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 7

id. ; “this [provisional patent application] says that their product is analyzed by the system, . . . they said that the word ‘analysis’ here doesn’t mean the same as the word ‘analysis’ in our patent,” id. at 16; “[t]hey say [an alert]’s not meteorological data[,] I don’t know how you say a weather alert is not meteorological data,” id. at 15.

At the hearing, Baron also summarized its argument why summary judgment was premature.

[T]he documents . . . have shown . . . that MWI engages in significant processing and analysis of the data contained in the [National Weather Se rvice] warnings . . . . [W]e concede just getting i nformation from the National Weather Service and just passing it along without analysis, without manipulation, without doing any of the things that they say they do . . . would not be an i nfringement of the patent. But they say they do
these othe r things. . . . [T]he affidavit conflicts
with it . . . . That being the case, . . . we should have an opportunity to test what is in the affidavit and before the Court grants summary judgment.

Id. 23. Baron specifically highlighted the importance of
MWI ’s source code to its opposition to summary judgment.

There’s a source code out there that tells what they do. . . . [W]hat is said in the affidavit is in conflict with what is said right here in [the prov isional patent application] . . . [a]nd it is als o not tested by us in order to determine whether it’s e xactly correct or not, and we have asked to do that. In order to be able to compare the product or se rvice to the properly construed claims, that’s what we asked the Court for an opportunity to do.

Id

. at 20. The district court, however, looked to the brie fing and affidavits filed by MWI and summarized Baron’sBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 8

argument as: “ I don’t believe what they say; I want to go in and dig deeper and see if they are lying.” Id. at 17.

Throughout the hearing, MWI’s arguments also ce ntered on disputed claim terms and the relevancy of the source code. “[W]e have a source code that enables us to analyze

— and I will use that term ‘analyze’

— to reach the geographic latitudes and longitudes of a NWS warning
and then c ompare that polygon with addresses that we
have for our subscribers.” Id. at 36. “[W]e find out the type of alert, we find out the time, and we find out the geographical area. That’s what we mean by analyze.” Id. at 51. But “we do it arithmetically. There’s nothing special about it. We do it by virtue of math. That’s why
our source code is irrelevant.” Id. at 43

- 44. And, as it stated, MWI did not infringe because “the patent claims that it has a logic . . . designed to do one thing and one thing only, and that’s to determine . . . whether a contact [sic] identifier identifies a remote unit that is located
within the area of a weather alert.” 5 Id. at 36. “[Our system] doesn’t have a logic to do that.” Id. at 38.

On February 1, 2012, the court g ranted MWI’s mot ion for summary judgment of non infringement and found Baron’s outstanding motions to be moot. Disposing of
Baron’s petition under Rule 56(d), the court found that Baron never “ask[ed] for more time to complete discovery”
and failed to “ass ert it could not prosecute this action
wi thout further discovery.” J.A. 29

. Accordingly, “l eft

5 The dissent appears to adopt that view of how i nfringement of the asserted claims must be determined.
Dissent at 3

. It finds relevant— as does MWI

— that users of MWI’s systems provide a “self

- designated location” for
weather alerts. Id. Without proper claim construction

, however, it seems difficult to know whether that distin ction is important

.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 9

solely with [MWI] ’s affidavit evidence, ” t he court conclu ded that Baron’s opposition to summary judgment consis ted only of asserting that MWI “ is lying .” J.A. 15 , 28. In the court’s view, MWI had therefore “submitted unrefuted evidence that its service does not perform numerous steps of the plaintiff’s pate nt,” namely, MWI’s evidence demo nstrated that “it does not use a geographical area, region, cell, or grid to determine areas to be altered

. ” J.A. 28.

After reaching its conclusion on infringement, t he

court held that claim construction was unnecessary, even though Baron “obstinately insisted ” otherwise. Its “ duty ,” as the court saw it, was “ to construe on ly disputed claim
terms.” J.A. 32 . The court reasoned that Baron did “not
d ispute the meaning of any terms” because it had “ refused” to “define a variety of terms through discovery”

r equested by MWI. J.A. 30

- 31

. Therefore, despite the parties’ differing positions on the definition of several
terms in the asserted claims and Baron’s motion for a
Markman hearing, the court declined to construe any terms during its infringement analysis.

Shortly after prevailing on summary judgment, MWI filed a motion for attorney ’s fees pursuant to 35 U.S.C. § 285 , which the court also granted. In April 2012, t he court entered judgment awarding MWI $243,757.45 for attorney’s fees

.
Baron timely appealed the grant of summary jud gm ent of noninfringement and the award of legal fees. We have jurisdiction over this appeal p ursuant to 28 U.S.C. § 1295(a)(1 ).

II. D ISCUSSION

Under Federal Rule of Civil Procedure 56(d), a party opposing a summary judgment motion may request that a
distri ct court delay ruling on the motion in order to obtain additional discovery without which “ it cannot present facts essential to justify its opposition .” Fed. R. Civ. P.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 10

56(d). 6 The Eleventh Circuit has explained that “[t]he whole purpose of discovery in a case in which a motion for summary judgment is filed is to give the opposing party an opportunity to discover as many facts as are available
and he considers essential to enable him to determine whether he can honestly file opposing affidavits.” Snook

v . Trust Co. of Ga. Bank of Savannah, N.A. , 859 F.2d 865, 870 (11th Cir. 1988) ( quoting Parrish v. Bd. of Com’rs of
Ala

. State Bar , 533 F.2d 942, 948 (5th Cir. 1 976)). Accor dingly, district courts in the Eleventh Circuit should grant requests under Rule 56 (d) “when the party opposing the [summary judgment] motion has been unable to obtain responses to his discovery requests” and the discovery sought would be essential to opposing summary judgment
and “ relevant to the issues presented by the motion for

summa ry judgment .” Snook , 859 F.2d at 870 (citation omitted) ; see Porter v. Ray , 461 F.3d 1315, 1324 (11th Cir. 2006)

. Here, Baron requested that the district court delay ru ling on MWI’s summary judgment motion until it had to the opportunity to examine MWI’s source code and to depose Ritterbusch and Fannin. 7 It adequately explained

6 We apply the law of the regional circuit when r eviewing the court’s decision under Rule 56(d). Exigent Tech., Inc. v. Atrana Solutions, Inc. , 442 F.3d 1301, 1310 (Fed. Cir. 2006). In the Eleventh Circuit, a district court’s denial of such a request may b e overturned if the decision
was an abuse of discretion. Carmical v. Bell Helicopter Textron, Inc.

, 117 F.3d 490, 493 (11th Cir. 1997).

7 The dissent correctly notes that we do not reach whether summary judgment was “supported by the record
evidence.” Dissent at 6 . That is not because, as the dissent contends, we are trying to present “a highly selective, one

- sided perspective of the record.” Id. That is
inaccurate. We simply decline to repeat the error of theBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 11

how that additional discovery was relevant and essential for its opposition to MWI’s summary j udgment motion. 8 Baron detailed in its briefs to the district court and during the summary judgment hearing how MWI’s source code
could show that the accused devices met several of the
limitations of the asserted claims. As shown in its i nfringement cont entions, Baron asserted that certain features of the accused products met the “logic,” “analyze,” and “computer” limitations found in some of the asserted claims. Per the Ritterbusch and Fannin affidavits, those features are enabled by MWI’s source code. 9 MWI asser tdistrict court by prematurely consideri ng whether the incomplete record supports summary judgment.

8 Baron did not file the affidavit normally required by Rule 56(d). However, an affidavit or declaration is not required in the Eleventh Circuit. Snook

, 859 F.3d at 871 (“In this Circuit, a part y opposing a motion for summary judgment need not file an affidavit pursuant to Rule 56( [d]) . . . in order to invoke the protection of that Rule.”)

.

9 The dissent states that Baron has no “entitlement to th[e] discovery” of source code because it failed t o “demonstrate good cause as to why the source code was relevant to the alleged infringement.” Dissent at 9

. But “good cause” is required to be shown under Rule 26(b)(1) only if seeking broad discovery of “ matter [s] relevant to
the subject matter involve d in the action .” Fed. R. Civ. P. 26(b)(1) (emphasis added); see, e.g. , Fed. R. Civ. P. 26, Advisory Committee Notes, 2000 Amendment ; In re Subpoena to Witzel , 531 F.3d 113, 118 (1st Cir. 2008). Baron seeks discovery of t he source code as rele vant to its
claims ; Baron’s burden under Rule 26(b)(1) is not good cause. It only has to show that the source code is relevant and likely to lead to admissible evidence

— which it has clearly demonstrated. See id. Under the agreed prote ctive order , MWI ca n require that only Baron’s attorneysBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 12

ed, though, that those features are not enabled by the source code in an infringing manner. Examining the
source code would have enabled Baron to determine if MWI’s noninfringement position was correct

— which Baron believed to not be the case g iven the disclosures in the provisional patent application produced by MWI regarding how the accused products might analyze data
from NWS warnings with logic implemented on a compu ter. The opportunity for the reasonable chance to disprove MWI’s position o n noninfringement was relevant and essential to Baron’s opposition of MWI’s motion for su mmary judgment. 10

Baron’s opportunity to depose Ritterbusch and Fannin was equally important to Baron’s ability to adequately oppose summary judgment. As demonstrated by their affidavits, Ritterbusch and Fannin both possessed pe rsonal knowledge of the functionality of the accused pro ducts. Their affidavits were MWI’s primary evidence to support its motion for summary judgment, and the stat ements made in them were accep ted as true by the district

have access to the code. There is no basis to further withhold the discovery of the source code.

10 MWI asserts that its source code was not esse ntial

— or even relevant

— to show infringement because the outputs of MWI’s accused products, to which Baron had ready access, were enough to definitively prove that MWI did not infringe the ’525 patent. We have no doubt that the output of a system may prove noninfringement in some cases. But MWI fails to show how the output of MWI’s WeatherCall programs alone proves that the accused products lack an essential limitation in each and every asserted claim of the ’525 patent. And MWI does not explain how it would make that showing without construction of several key terms in the as serted claims.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 13

court. Deposing Ritterbusch and Fannin would have provided Baron its principal opportunity to directly cha llenge the veracity of the statements made in their affid avits.

Therefore, under the circumstances here, it was i mproper for the district court to have refused Baron’s request to delay ruling on MWI’s summary judgment motion until Baron had the opportunity to access MWI’s source code and depose Ritterbusch and Fannin. See Metro. Life Ins. Co. v. Bancorp Servs

. , L.L.C. , 527 F.3d 1330, 1338 (Fed. Cir. 2008) (reversing district court refusal to grant Rule 56(d) motion when discovery sought was the principal opportunity to contradict statements in
declarations that a district court treated as truthful and dispositive) ; see also Wideman v. Shallowford Cmty. Hosp., Inc. , 826 F.2d 1030, 1037 n.11 (11th Cir. 1987) (“[T]he proceedings in the district court took a bizarre turn when the court accepted the affidavits . . . in support
of the de fendants’ motion for summary judgment, yet

re fused to permit the plaintiffs to depose those same
individuals. This is not a proper practice.”) ; cf. Exigent
Tech

. v. Atrana Solutions , 442 F.3d 1301 (Fed. Cir. 2006) (applying Eleventh Circuit law and affirming a denial of a Rule 56(d) motion because it was made after the close of discovery and after the plaintiff had already obtained two extensions of time to respond to a summary judgment
motion ). We do not agree with the district court that Baron “[a]t no point . . . assert[ed] it could not prosecute this action without further discovery” and “did not ask for more time to complete discovery.” J.A. 29 n.15. In its brief in opposition to summary judgment and at the summary judgment hearing, Baron informed the district court that summary judgm ent would be premature under Rule 56(d) because it had yet to obtain MWI’s source code and to depose Ritterbusch and Fannin. Baron also a ppears to have diligently pursued that discovery. It made repeated requests to MWI for the source code and resortedBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 14

t o motions practice when the parties were at an impasse. And it noticed depositions of Ritterbusch and Fannin
almost two months before MWI filed its motion for su mmary judgment

— depositions that it appears would have occurred except for the district court’s summary judgment ruling. 11 The district court abused its discretion by den ying Baron’s request under Rule 56(d) to delay ruling on MWI’s summary judgment motion. 12

III. C ONCLUSION

The district court prematurely granted summary judgment of noninfringement to MWI. We therefore vacate the district court’s summary judgment order, including its dismissal of Baron’s outstanding motions as moot, and the district court’s order and judgment awar ding attorney’s fees to MWI. We remand this case to the district court for further proceedings consistent with this

11 The dissent claims that Baron should not be a fforded the opportunity to depose Ritterbusch and Fannin because it made a “strategic choice” to delay those depos itions until after the summary judgment hearing. Dissent

at 10 . Baron noticed those depositions months before summary judgment briefing started. MWI finally offered Ritterbusch and Fannin the same day summary judgment briefing concluded and with notice of only a few business days. There was no “strategic choice” by Baron to r esche dule the depositions for a later date (that still fell months before the close of discovery) because of “the short notice and other scheduling conflicts.” D.E. 40

- 7 at 2

.

12 T he dissent asserts that there is no cause to pe rmit additional discovery becaus e Baron should have sought “protective relief from the court” to enable it to take discovery before summary judgment. Dissent at 10

. But the dissent ignores the relief Baron sought that is the very subject of our opinion: Baron’s Rule 56(d) request

.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 15

opinion. In remanding for further proceedings, we e xpress no opinion as to whether Baron has a meritorious cause of action; after claim construction and further discovery, it may be that the cause of action i s non

meritorious. But Baron is entitled to the opportunity to prove otherwise under a correct claim construction with appropriately limited discovery. 13

13 Baron argues that it also produced adequate ev idence of infringement to survive summary judgment. Given our holding, we need not reach the merits of the district court’s ruling on infringement. However, on remand, we note that the district court should not avoid construing relevant terms in the asserted claims as part of its infringement analysis. A determination of patent infringement, even on summary judgment, requires a two

step analysis, the first of which is claim construction. Cybor Corp. v. FAS Techs., Inc.

, 138 F.3d 1448, 1454 (Fed.
Cir. 1998) (en banc)

. The importance of claim construction is quite evident here. The infringement analysis in this case may very well turn on the definition and scope of terms in the asserted claims. As made clear during the summary judgment hearing, the parties dispute the scope of many claim t erms and rely on their own understandings of those terms to support their infringement or noni nfringement theories. And they also look to seemingly conflicting intrinsic and extrinsic evidence to support their interpretations of relevant claim terms. Claim construction would resolve the disputes between the parties and provide the legal basis for determining i nfringement.

In addition, after construing the terms of the a sserted claims, the court can then also properly decide the rel evance of whatever admissions related to noninfringementBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 16

VACATED AND REMANDED

C OSTS

Each party shall bear their own costs.

that Baron may have made during discovery or during the summary judgment hearing. Without construing relevant claim terms, however, the import of those statements

— and the propriety of the parties’ positions on infring ement

— cannot be reasonably determined with an appr opriate level of clarity.

This guidance is not an “appellate pronouncement[] on case management,” as the dissent sees it. Dissent at 9

. It is merely recognition that the facts of this case demo nstrate the necessity of construing claim terms as part of the infringement analysis

.

# United States **Court of Appeals**  **for the Federal Circuit**

______________________

BARON SERVICES, INC., Plaintiff

- Appellant,

v.

MEDIA WEATHER INNOVATIONS LLC, Defendant

- Appellee.

______________________

2012

- 1285

, - 1443

______________________

Appeal from the United States District Court for the
Northern District of Alabama in No. 11

- CV

- 1606, Judge Inge Prytz Johnson.

______________________

R EYNA

, Circuit Judge, dissenting.

This case presents the question of at what point should the case manag ement perspectives of a party trump an otherwise properly entered summary judgment? The majority takes the unusual course of vacating a summary judgment determination that is supported by the record evidence based on the premise that the district court failed to manage procedure and discovery in accor dance with Baron Services, Inc.’s (“Baron”) case manag ement expectations which the district court held to be
unreasonable and obstructive. I find that the district court’s case management was not an abuse of discretion,BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 2

and that the record evidence supports the entry of su mmary judgment. I respectfully dissent.

B ACKGROUND

Baron accuses Media Weather Innovations, LLC (“MWI”) of infringing U.S. Patent No. 6,490,525 (“the ’525 Patent”) by transmitting National W eather Service (“NWS”) warnings. The written description of the ’525 Patent discloses a computer

- based system that, after compiling meteorological data, may predict the path of a storm, ’525 Patent col. 3 ll. 39

- 41, use the data to generate storm profiles

, id

. at col. 4 ll. 57

- 59, and perform “storm tracking functions.” ’525 Patent col. 6 ll. 24

- 27, 64

- 65. The end result, at least as envisioned in the preferred embodiment, is that the generated storm profiles are “distributed to the respective remote units by the distr ibution network” so that an end user receives “site

specific” and “highly relevant” weather information. ’525 Patent col. 4, ll. 59

- 65.

The asserted claims are drawn to “logic” configured to manipulate weather data and make determinations relating to weather events. The logic is also configured to
transmit such weather

- related determinations to a user in a geographic region experiencing the impending weather
event. Claim 1 recites:

1. A system for providing weather event notific ations, compr ising:

memory for storing contact identifiers that identify a plurality of remote units; and

logic configured to make a determination
as to whether one of said contact identifiers identifies at least one of the said r emote units that is located within a

g eographic region of an impending weat her event, said logic further configured to
transmit

, if said logic determines in saidBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 3

determination that said one contact ide ntifier identifies a remote unit located wit hin said geographic region, a signal to the
at le ast one remote unit based on said one contact identifier thereby enabling the at least one remote unit to notify a user wit hin said geographic region of said impen ding weather event.

’525 Patent col. 10 ll. 33

- 47 (emphases added) . Based on the plain language of the representative claim, it cannot be infringed unless an accused system compiles data and determines, based on the user’s location, where to send the corresponding warning. The issue before the district court was whether MWI’s dissemination of unmanipula ted NWS warnings, to a user at a self

- designated location, 1 infringes the ’525 Patent.

S UMMARY J UDGMENT

The dispositive summary judgment rationale

— that MWI’s products do not infringe because they merely download publicly available NWS notifications and fo rward the notifications to subscribers

— is based on Baron’s admissions and statements concerning what constitutes

1 MWI distributes NWS warnings only to those u sers who opt

- in through MWI’s WeatherCall products. This distinction is important in understanding a core
difference between Baron’s commercial embodiment of its patent and the accused products. Whereas the Baron Saf

T- Net system analyzes where to send NWS warnings based on Internet digital add ressing and whether a customer’s phone number is inside or outside the area affected by the weather alert, see J.A. 556

− 57, the MWI accused products forward the NWS warnings based solely on geographic information the user provides in opting

- in and requesting MWI’s weather alerts. J.A. 491

− 92.BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 4

infringing activity. See J.A. 22; J.A. 1034. First in its written discovery responses, and later at oral argument, Baron defined the parameters of noninfringement: “[W]e concede just getting information from the National Weather Service and just passing it along without mani pul ation . . . would not be an infringement of the patent.” J.A. 1034; see also J.A. 380. The district court noted that
“Baron admits that information from the National Weather Service alone, including a ‘warning’, [sic] does not infringe the ’525 Patent.” J.A. 23, n.9 (quoting J.A. 380) (emphasis in original omitted).

In moving for summary judgment, MWI argued that its straightforward dissemination of weather info rmation

— without analysis or manipulation

— could not satisfy the specific logic requirements of the asserted claims and fell squarely within Baron’s parameters of noninfringement. To support its position, MWI adduced evidence, including sworn declarations of corporate repr esentatives, J.A. 138

− 39; J.A. 141

− 43; J.A. 491

− 92, copies
of the alerts MWI d isseminated to subscribers, J.A. 1058, and a proposal in the MWI provisional patent application describing preferred embodiments as delivering NWS warning without meteorological analysis or forecasting.
See J.A. 626

− 27. The witness declarations provided a particularized comparison between operation of the accused products and the limitations in the claims. Mr. Michael Fannin, developer of the accused products, e xplained that the computer source code does not analyze meteorological data as claimed in the ’525 Patent. J.A. 138. Similarly, Ms. Valerie Ritterbusch, President of MWI, provided two declarations clarifying that there is no analysis of data, id

. at 142, and confirmed that the a ccused products transmit NWS warnings without engaging in any sort of weather event prediction. Id

. at 492.

Relying primarily on the witness declarations, the di strict court granted summary judgment because the MWI “does not use a geographical area, region, cell or grid toBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 5

determine areas to be alerted.” J.A. 28. In pa rticular, the
district court cited to Baron’s admission in the written discovery response, and then evaluated the sworn stat ement of Ms. Ritterbusch stating that MWI “only tran smit[s] National Weather Service warnings to members of the public who subscribe to MWI’s services.” J.A. 24 (quoting J.A. 491). After pointing out that Baron had not presented any evidence of infringement, by affidavit or otherwise, the district court concluded that MWI’s unr efuted showing established that it merely passes on alert s and such basic activities could not, as a matter of law, perform the numerous steps recited in the asserted
claims. See id

. at 28

− 29 (citing Ritterbusch declaration).

In light of this body of evidence, I would affirm the district court’s summary judgm ent ruling

— a ruling that isolated and disposed of unsupported infringement claims.
See Celotex Corp. v. Catrett , 477 U.S. 317, 323

– 24 (1986) (“One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported
cl aims or defenses, and we think it should be interpreted in a way that allows it to accomplish this purpose.”); see also Minkin v. Gibbons, P.C. , 680 F.3d 1341, 1351 (Fed. Cir. 2012). Indeed, the purpose of summary judgment is to dispose of those issues fo r which there is no contention
as a matter of law. F ED

. R. C IV

. P. 56(c); see also Ande rson v. Liberty Lobby, Inc

. , 477 U.S. 242, 247 (1986).

MWI discharged its burden when it presented ev idence that it met Baron’s noninfringement description. Baron, ha ving made a choice to define the bounds of noninfringing activities, did not rebut MWI’s summary judgment showing. Because Baron failed to point to specific ways in which accused products were capable of analysis and/or manipulation that met the claim li mit ations, the district court was correct to conclude that Baron did not have a credible basis to oppose the motion for summary judgment. Exigent Tech., Inc. v. Atrana Sol utions, Inc. , 442 F.3d 1301, 1308

− 09 (Fed. Cir. 2006) (a p-BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 6

plying Eleventh Circuit law and holding that summary judgment is warranted when the movant has discharged its burden and there is an absence of evidence to support the nonmoving party’s case); Optivus Tech., Inc. v. Ion Beam Applications S.A. , 469 F.3d 978, 990 (Fed. Cir. 2006) (rea ffirming the well

- established summary jud gment framework for shifting the burden of production).

D ISCOVERY AND C LAIM C ONSTRUCTION

Taken as a whole, I believe that the majority takes a highly selective, one

- sided perspective of the record. 2 First, the ma jority neither acknowledges nor discusses Baron’s voluntary narrowing of the noninfringement issue. Second, the majority ignores whether the summary judgment determination is supported by the record ev idence. And, third, the majority fails to take into a ccount Baron’s tactics which the district court described as obstinate and egregious. J.A. 30; J.A. 32.

Our standard of review warrants deference to the di strict court’s characterization of the litigation dynamics, 3

2 See, e.g.

, Majority Op. 2 (emphasizing that the
district court did not “set a timetable for Markman pr oceedings or for exchanging invalidity or infringement contentions”); Majority Op. 8

− 9 (using quotation marks to underscore the district court’s perceived “duty”).

3 “Questions of trial management are quintesse ntially the province of the district courts.” United States v.
Smith , 452 F.3d 323, 332 (4th Cir. 2006); see also Stuart v. Huff , 706 F.3d 345, 350 (4th C ir. 2013) (honoring the trial court’s “superior vantage point” in “exercising jud gment based on [the trial court’s] ‘on the scene’ presence”) (internal citations omitted). These well settled precepts
are consistent across all Circuits. See, e.g.

, Outside the Box Innovations, LLC v. Travel Caddy, Inc.

, 695 F.3d

1285 , 1296 (Fed. Cir. 2012) (“ Deference is giv en to the
district court’ s discretion in trial management ‘unless theBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 7

especially where, as here, the district court recognized Baron’s efforts to undermine its established procedures. The district court noted Baron’s propensity to ignore court orders “in favor of its own proposed time lines and rules of procedure.” See J.A. 33, n.16. The record bears out this observation, demonstrating a pattern of Baron comporting
in a manner that suited its own convenience. For exa mple, in response to a multitude of MWI inquiries, Baron resisted written discovery unless and until the district court adopted local patent rules and/or set a Markman hearing. See, e.g.

, J.A. 174; J.A. 362

− 85 (declining to exchange proposed claim constructions because Baron considered such a request “premature” prior to the court setting a Markman timetable). The district court e xpressed findings on these dilatory tactics and deficient discovery responses. The written decision reflects the
district court’s frustration with the manner in which Baron prosecuted its case:

[T]he plaintiff relies on its request for a hearing
and the timetable offered by it that was never adopted by the court as a reason it does not have to respond to discovery. The plaintiff did not a ddress the fact that the requests for admission, as well as the remainder of the discovery propounded by the defendant were all in accordance with the Scheduling Order actually entered by this court

. J.A. 23, n.9 (emphasis in original).

ruling is manifestly erroneous.’”) (quoting United States v.
Frazier , 387 F.3d 1244, 1258 (11th Cir. 2004) (en banc )) ; United States v. Criden , 648 F.2d 814, 817

– 18 (3d Cir. 1981) (where the trial court has a “superior vantage point” from which to resolve the question, its decision “merits a high degree of insulation for appellate rev ision”).BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 8

Baron’s efforts to dictate the trajectory of court pr oceedings should not have gained traction on appeal. While some districts and individual judges have elected to impose local patent rules, the district court was under no obligation to incorporate Baron’s requests into the docket control order. Nor was the district court obligated to hold

a Markman hearing prior to summary judgment, 4 as demonstrated by Baron’s failure to cite authority that it was entitled to a hearing as a matter of right. This court, on previous oc casions, has chastised district courts for conducting a trial without rigorous claim construction
efforts. E.g.

, Allen Eng’g Corp. v. Bartell Indus., Inc. , 299 F.3d 1336, 1346 (Fed. Cir. 2002); Graco, Inc. v. Binks Mfg.
Co. , 60 F.3d 785, 791 (Fed. Cir. 19 95). These decisions are procedurally distinct from the situation presented in this case. Our prior discussions of the need for claim interpretation have not demanded that claims be co nstrued in advance of summary judgment, and importan tly, in Allen Engi neering and Graco the parties did not
diminish the need for the district court to construe the claims by voluntarily defining the parameters of noni nfringement. Here, the district court had no need to exa mine the meaning of the claims in exacting detail b ecause Baron’s explicit concessions shaped the infringement

4 To the contrary , in the context of a given case, claim construction can, and does, occur solely based on the paper record. E.g.

, Interactive Gift Express, Inc. v. Compuserve Inc. , 1998 WL 247485 at *1 , n. 3 (S.D.N.Y. May 15, 1998) (“ The Court n otes at the outset that no
Markman hearing is needed in this case because the Court does not require expert or other testimony to ai d it
in its claim construction.” ), vacated on other grounds , 256 F.3d 1323 (Fed. Cir. 2001); Revlon Consumer Prods. Corp.

v. Estee Lauder Co., Inc.

, 2003 WL 21751833 , at *14 (S.D.N.Y. July 30, 2003) (collecting district court cases).BARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 9

analysis by narrowing the scope of its claims when co mpared the claims with the accused products.

I believe that the district court acted reasonably by r elying on Baron’s statements regarding th e potential noninfringing operation of the accused products, and that such reliance negated the district court’s obligation to
further define terms in the asserted claims. Compare
with Majority Op. 15, n.13 (critiquing the district court’s handling of claim construction in performing the i nfringement analysis). The majority’s reasoning encroac hes upon a district court’s discretion to manage a case, and its critiques amount to appellate pronouncements on case management. The majority states that “[t]he im portance of claim construction is quite evident here,” Majority Op. 15, n.13 , an assessment that indicates how the majority would have handled the case if wearing the district court’s robe. But that is not the inquiry on appeal. The issue on appeal is wh ether the record evidence supports the entry of summary judgment and whether the district court abused its discretion in its case management decisions.

The majority also pays significant attention to Baron’s claims regarding its need for MWI’s source code, yet Baron has no absolute entitlement to this discovery given its failure to demonstrate good cause as to why the source code was relevant to the alleged infringement. J.A.

164

− 65. I find that the source code issue is but one part of Baron’s litany of u nsubstantiated discovery grievances
that feint towards evidence that is not in the record to divert attention from the unrebutted evidence that is in
the record

. E.g. , Majority Op. 11

− 14

. The majority likewise errs in proclaiming, without confronting the salient facts in the record, that the di strict court “refused” to permit depositions of Mr. Fannin and Ms. Ritterbusch. Majority Op. 13 . The actual corr espondence between the parties contradicts this assertion
and shows that Baron could have taken Mr. Fannin andBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 10

Ms. Ritterbusch’s depositions prior to the summary jud gment hearing. J.A. 970

− 71. The parties had notice as to when the summary judgment motion would be heard and
once the MWI witnesses were made available it behooved Baron to secure the testimony it needed to survive su mmary judgment, or at minimum to seek protective relief from the court. Instead, Baron affirmatively chose to not take depositions prior to the summary judgment hearing and to actually declare it would delay securing that

tes timony after the district court considered the summary judgment positions. This was a strategic choice for which it should bear the consequences. It is not our duty to repair a party’s self

- inflicted wounds.

C ONCLUSION

While I agree that parties generally should be permi tted to develop the record, obtain claim construction, and engage in discovery prior to consideration of summary judgment, a party should not be permitted to escape summary judgment through deliberate trial strategies. Barfield v. Brierto n , 883 F.2d 923, 932 (11th Cir. 1989) (explaining that it is within a district court’s discretion to refuse to stay consideration of a motion for summary judgment “if the district court is dissatisfied with the nonmovant’s explanations as to why he cannot rebut the movant’s motion for summary judgment”) (citing Wallace
v. Brownell Pontiac

- GMC Co., Inc. , 703 F.2d 525, 527 (11th Cir. 1983)). The record in this case supports the conclusion that the district court allowed discovery to run its course and after Baron made concessions regarding what constituted noninfringing activity, the district court evaluated the evidence of record and correctly found that Baron “failed to provide any evidence of specific actions, processes, or procedures of [MWI’s] product th at follow the step s of plaintiff’s patent.” J.A. 26. Eleventh Circuit
case law confirms that the district court was correct to consider whether summary judgment was appropriate
based on the record before it. Holloman v. Mail

- WellBARON SERVICES

, INC

. v. MEDIA WEATHER INNOVA TIONS LLC 11

Corp. , 443 F.3d 832, 836 (11th Cir. 2006) (appellate review of a district court’s grant or denial of summary judgment considers “only the evidence that was available to the district court at the time it considered the motion”) (internal citation omitted).

The majority adopted Baron’s procedural perspective and was dismissive of the district court’s role in setting the tone and schedule for case management and discovery disputes. In my view, the district court is endowed with
broad discretion to decide the manner it will run a case. F ED

. R. C IV

. P . 16; Pac. Indem. Co. v. Broward County

, 465 F.2d 99, 103 (11th Cir. 1972) (noting that Rule 16 “gives the trial court broad discretion in conducting pre

trial procedures in order to narrow the issues, reduce the
field of fact contro versy for resolution, and to simplify the mechanics of the offer and receipt of evidence”); accord
Rosario

- Diaz v. Gonzalez , 140 F.3d 312, 315 (1st Cir. 1998) (“The Civil Rules endow judges with formidable

case

- management authority. . . . In exercising thi s power, trial judges enjoy great latitude.”) (internal citations omitted). Here, the record shows that the district court acted well within the bounds of reasonableness in denying Baron’s case management and discovery requests. Cf. Vivid Tech., Inc. v. Am. Sci. & Eng’g, Inc. , 200 F.3d 795,

803

− 04 (Fed. Cir. 1999) (affirming a district court’s dec ision to limit discovery as appropriate in each phase of the litigation). Because I find that the district court did not abuse its discretion and that the record supports su mmary judgment, I respectfully dissent.