Free Order on Motion for Leave to File - District Court of Delaware - Delaware

Case 1:04-cv-01452-JJF Document 56 Filed 04/28/2006 Page1 of 4
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
E.I. DUPONT DE NEMOURS AND :
COMPANY, :
Plaintiff, :
v. : Civil Action No. 04-1452-JJF
GREAT LAKES CHEMICAL :
CORPORATION, :
Defendant. :
MEMORANDUM ORDER
Pending before the Court are Defendant Great Lakes Chemical
Corporation’s Motion For Leave To File An Early Summary Judgment
Motion Amd For A Stay Of Discovery During Consideration Thereof
(D.I. 46, 48) and Defendant's Motion For An Extension Of Time
(D.I. 50). For the reasons discussed, the Court will grant the
motion for extension of time and consider Defendant's reply
brief; however, the motion for leave to file will be denied.
I. BACKGROUND
The facts pertinent to the instant Motions are as follow.‘
Both Plaintiff and Defendant filed patent applications with the
United States Patent and Trademark Office (“USPTO”), seeking to
patent methods of extinguishing fires using a chemical compound
known as HFC—227. On June 24JQl994, the parties entered into a
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license agreement (“the 1994 .reement”), and on May 8, 2002, the
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IA more detailed account of the facts can be found in the
Court’s August 22, 2005 Memorandum Opinion, granting Defendant’s
Motion To Dismiss in part. (D.I. 28).

Case 1:04-cv-01452-JJF Document 56 Filed O4/28/2006 Page 2 of 4
parties signed a modified version of the 1994 Agreement (“the
2002 Agreement"). Both the 1994 and 2002 Agreements contain non-
assert provisions, which prohibit the parties from asserting
certain patents against each other.
On February 7, 2005, Plaintiff filed its Amended Complaint,
alleging patent infringement and breach of contract and seeking a
declaratory judgment of non—infringement as to one of Defendant’s
patents. Defendant subsequently filed a motion to dismiss (D.I.
10) and several counterclaims (D.I. 33). On August 22, 2005, the
Court granted Defendant’s motion to dismiss in part, dismissing
Plaintiff's claim for declaratory judgment. (D.I. 29).
Since the motion to dismiss was granted in part, the parties
have served initial sets of interrogatories and document
requests, and objections and responses were served in February
2006. In March 2006, Defendant filed the instant motion for
leave to file. Pursuant to the Scheduling Order (D.I. 40), case
dispositive motions are not peJmitted without leave of Court
until May 2007. %
II. PARTIES CONTENTIONS )
By its Motion, Defendant hontends that it should be granted
summary judgment because the non—assert provisions of the 1994
and 2002 Agreements clearly and unambiguously prohibit Plaintiff
from asserting any of its patents to prevent Defendant from
manufacturing, using, or selling the HFC—227 product. Defendant
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Case 1:04-cv-01452-JJF Document 56 Filed O4/28/2006 Page 3 of 4
further contends that summary judgment is appropriate on
Plaintiff’s breach of contract claim because Plaintiff first
breached the contract by filing this action. In response,
Plaintiff contends that consideration of summary judgment would
be inappropriate at this juncture because very little discovery
has taken place since the Court considered Defendant's motion to
dismiss.
III. DISCUSSION
The Court concludes that consideration of Defendant’s motion
for summary judgment is premature. Courts are “obliged to give a
party opposing summary judgment an adequate opportunity to obtain
discovery.” Dowling v. Philadelphia, 855 F.2d 136, 139 (3d Cir.
1988) (citing Celotex Corp. v. Catrett, 477 U.S. 317, 322
(1986)). Since the Court considered Defendant's motion to
dismiss, no substantial discovery has taken place. The parties
have only served and responded to initial sets of interrogatories
and document requests. Because many of the issues Defendant
wishes to address on summary judgment are the same as those
addressed in the motion to dismiss, the Court concludes that
Plaintiff should be permitted to obtain discovery without
interruption. Accordingly, thy Court will not grant Defendant
leave to file an early summaryijudgment motion.
Defendant contends that P;aintiff’s failure to file a Rule
56(f) affidavit demonstrates tiat no additional discovery is
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Case 1:04-cv-01452-JJF Document 56 Filed O4/28/2006 Page40f4
required. However, the Court concludes that Rule 56(f) is
triggered only by the filing of a summary judgment motion and not
leave to file one early. Fed. R. Civ. P. 56(f). Thus, the Court
concludes that Rule 56(f) is inapplicable, and therefore, it was
not necessary for Plaintiff to file an affidavit.
Because the Court has concluded that consideration of a
summary judgment motion would be premature, the Court will not
consider Defendant's request for a stay of discovery.
Accordingly, the Court will deny Defendant Great Lakes Chemical
Corporation’s Motion For Leave To File An Early Summary Judgment
Motion And For A Stay Of Discovery During Consideration Thereof
(D.I. 46, 48).
EE
NOW THEREFORE, IT IS HEREBY ORDERED that:
l. Defendant Great Lakes Chemical Corporation's Motion For
Leave To File An Early Summary Judgment Motion And For A
Stay Of Discovery During Consideration Thereof (D.I. 46, 48)
is DENIED.
2. Defendant's Motion For AmiExtension Of Time (D.I. 50) is
GRANTED. 3
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