The opinion of the court was delivered by: JAMES HOLDERMAN, District Judge
MEMORANDUM OPINION AND ORDER
Plaintiff Andrew Corporation ("Andrew"), filed this suit on
September 23, 2004 alleging that defendant Beverly Manufacturing
Company ("Beverly"), infringed two of Andrew's United States
patents No. 5,850,056 ("the '056 patent"), and No. 6,324,543
("the '543 patent"). (Dkt. No. 1). Beverly filed an answer,
affirmative defenses and counterclaim on November 8, 2004. (Dkt.
No. 12). On January 7, 2005, Beverly filed a motion for partial
judgment on the pleadings as to Andrew's infringement allegations
under the '543 patent pursuant to Rule 12(c) of the Federal Rules
of Civil Procedure, ("Rules"). (Dkt. No. 21). On February 3,
2005, this court granted Beverly's motion to stay discovery on
the '543 patent pending this court's determination of Beverly's
motion for judgment on the pleadings involving the '543 patent.
(Dkt. No. 27). The court's February 3, 2005 order also required
Andrew to identify the claims in the '543 patent that it alleges
Beverly's device infringes and required the parties to submit
jointly a paginated copy of the '543 patent's prosecution
history. For the reasons set forth below, this court denies
Beverly's motion for judgment on the pleadings, vacates the stay
of discovery and requests the parties to proceed with the agreed
amended litigation schedule set on May 26, 2005. (Dkt. No. 44). BACKGROUND
The '543 patent, dated March 12, 2002, is entitled "Stackable
Transmission Line Hanger." (Dkt. No. 31 at pg. 1). The '543
patent is for a device that allows the connection of transmission
cables to an antenna system such as a cellular or communication
tower. (Id. at 15). The patented device also contains a feature
that allows it to connect with other copies of the device so that
several transmission cables can be "stacked" or held by an
interconnected series of the patented devices to the transmission
Andrew's complaint alleges that Beverly's product Part No.
62875 ("Part No. 62875"), infringes Andrew's '543 patent. (Dkt.
No. 1 at ¶ 13). Andrew asserts that Beverly's device infringes
Claims 1, 2, 3, 4, 7, 8, 11, 12, 13, 15, 16, 17, 19, 20, 31, 32,
33, and 38 of the '543 patent. (Dkt. No. 30). Andrew seeks a
judgment of infringement, equitable and monetary relief, costs
and attorneys' fees. (Dkt. No. 1 at pg. 4). Exhibit B to Andrew's
complaint is a letter dated August 12, 2004 sent by one of its
attorneys to Beverly asserting that Beverly's Part No. 62875
infringes Andrew's '543 patent. The August 12, 2004 letter also
demanded that Beverly stop producing and selling Beverly's Part
No. 62875 and that Beverly provide an accounting of all Part No.
62875s sold since Andrew received its '543 patent. (Dkt. No. 1
Beverly filed a counterclaim seeking a declaration that its
Part No. 62875 does not infringe the '543 patent and seeking
attorneys' fees. (Dkt. No. 12 at pg. 8-9). Beverly argues that
this court can decide this issue of noninfringement under a 12(c)
motion for judgment on the pleadings. Andrew in response contends
that Beverly's motion goes beyond the pleadings, and therefore
the court cannot decide this issue under the present procedural
posture of the case. ANALYSIS
Andrew's complaint invokes this court's subject matter
jurisdiction pursuant to 35 U.S.C. §§ 271 and 281 and
28 U.S.C. §§ 1331 and 1338. (Dkt. No. 1 at ¶ 4). An actual controversy
exists between Andrew and Beverly so as to allow for the
existence of Beverly's requested relief of a judgment on the
pleadings of noninfringement. See Anoto AB v. Sekendur, No. 03
C 4723, 2004 WL 2434220, at * 1 (N.D. Ill. Oct. 28, 2004) (citing
Arrowhead Indus. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731,
736 (Fed. Cir. 1988)).
A. Motion for Judgment on the Pleadings verses Summary
As previously mentioned, the parties disagree whether this
court can determine at this stage in this litigation whether
Beverly's Part No. 62875 infringes Andrew's '543 patent. Beverly
argues that this court can decide the question of infringement
under a motion for judgment on the pleadings pursuant to Rule
12(c) of the Federal Rules of Civil Procedure ("Rules"). Andrew
counters that Beverly's motion and secondary information provided
by Beverly in support of its motion goes beyond the pleadings,
and therefore inappropriately converts the motion to one for
summary judgment. Andrew further argues summary judgment is not
appropriate at this stage in the litigation because the parties
have not yet to engage in discovery on the '543 patent/Part No.
62875 issue. Andrew also argues that Beverly should be denied
summary judgment because Beverly has failed to follow the
procedural requirements for the submission of factual information
in support of summary judgment under Local Civil Rule 56 (N.D.
As to procedural rules this court is bound to follow Seventh
Circuit law because as the United States Court of Appeals for the
Federal Circuit has stated, the regional appellate rules govern "procedural matters not unique to the areas that are
exclusively assigned to the Federal Circuit," National Pesto
Indus., Inc. v. West Bend Co., 76 F.3d 1185, 1188 n. 2 (Fed.
Cir. 1996) (citing Lummus Indus., v. D.M & E. Corp.,
862 F.2d 267 (Fed. Cir. 1996)). This court is, of course, bound by Federal
Circuit law on substantive areas of patent law exclusive to the
Federal Circuit's jurisdiction, but, this court must look to the
law of the Seventh Circuit for the proper method of addressing a
motion for judgment on the pleadings.
Andrew has not provided, and this court has been unable to
identify through its own research, any binding authority from the
Seventh Circuit or persuasive authority from the Federal Circuit
that holds that it is per se inappropriate for a court to
address a counterclaim of noninfringement by the procedural means
of a motion for judgment on the pleadings. Andrew's argument is
not that it is improper in general to address a motion for a
judgment on the pleadings, but that what Beverly is attempting to
do violates the requirements for a judgment on the pleadings
under Rule 12(c) by improperly requiring the conversion of the
motion to one for summary judgment under Rule 56.
The court, after reviewing the arguments presented by counsel,
believes that the proper procedure for the court to follow is to
address Beverly's motion for judgment on the pleadings as such
under Rule 12(c) and not convert Beverly's motion into one for
summary judgment under Rule 56.*fn1 1. Standard of Review for Rule 12(c) Judgment on the
Rule 12(c) permits for a motion for judgment on pleadings at a
point after the close of the pleadings but within such time that
the motion would not delay the trial. Fed.R.Civ.P. 12(c). A
court reviewing a Rule 12(c) motion for judgment on the pleadings
must apply the same standard as applied for a Rule 12(b)(6)
motion to dismiss for failure to state a claim upon which relief
maybe granted. Guise v. BMW Mortgage Inc., 377 F.3d 795, 798
(7th Cir. 2004). The well-pleaded allegations in the complaint
must be accepted as true and the ambiguities in the complaint
must be construed in favor of the plaintiff. Thompson v.
Illinois Dep't of Prof'l Regulation, 300 F.3d 750, 753 (7th Cir.
2002). Granting a Rule 12(c) motion is only permissible "when it
appears beyond a doubt that the plaintiff cannot prove any facts
to support a claim for relief and the moving party demonstrates
that there are no material issues of fact to be resolved."
Guise, 377 F.3d at 798.
"In a motion for judgment on the pleadings, the court considers
the pleadings alone, which consist of the complaint, the answer,
and any written instruments attached as exhibits." Housing Auth.
Risk Retention Group, Inc. v. Chicago Hous. Auth., 378 F.3d 596,
599 (7th Cir. 2004) adopting No. 02 C 4474 (N.D. Ill. 2003).
The court can also consider copies of written documents that the
defendant attaches to the motion when the documents are referred
to in the plaintiff's complaint, they are central to the
plaintiff's claims but were not attached as exhibits, Albany
Bank & Trust Co. v. Exxon Mobil Corp., 310 F.3d 969, 971 (7th
Cir. 2002). The court can also take judicial notice of matters in
the public record. Anderson v. Simon, 310 F.3d 969, 971 (7th
Cir. 2002). 2. Material Considered by the Court on the Motion for Judgment
on the Pleadings
Andrew objects to the consideration of other patents and their
prosecution histories to which Beverly has referred in its motion
and supporting memorandum. Andrew's view is that the court should
only consider the pleadings and the '543 patent, and that ...