                            UNITED STATES DISTRICT COURT
                            FOR THE DISTRICT OF COLUMBIA



BALLY GAMING, INC.,

        Plaintiff,
                v.                                        Civil Action No. 10-1906 (JEB)
HON. DAVID KAPPOS, et al.,

        Defendants.


                          MEMORANDUM OPINION AND ORDER

        Plaintiff Bally Gaming, Inc. brought this action against David Kappos, the Director of the

United States Patent and Trademark Office, and Betty Ringo and James Pearson, holders of U.S.

Patent 5,711,715. Bally believes its Kelly ‘918 patent does not interfere with the Ringo ‘715

patent. On Nov. 23, 2011, Bally filed a Motion for Summary Judgment, seeking a judgment

awarding it priority of invention. As such Motion is premature, the Court will deny it without

prejudice.

   I.        Legal Standard

        Summary judgment may be granted if “the movant shows that there is no genuine dispute

as to any material fact and the movant is entitled to judgment as a matter of law.” Fed R. Civ. P.

56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986); Holcomb v.

Powell, 433 F.3d 889, 895 (D.C. Cir. 2006). “A party asserting that a fact cannot be or is

genuinely disputed must support the assertion by citing to particular parts of materials in the

record.” Fed R. Civ. P. 56(c)(1)(A). “A fact is ‘material’ if a dispute over it might affect the

outcome of a suit under the governing law; factual disputes that are ‘irrelevant or unnecessary’

do not affect the summary judgment determination.” Holcomb, 433 F.3d at 895 (quoting Liberty

                                                 1
Lobby, Inc., 477 U.S. at 248). An issue is “genuine” if the evidence is such that a reasonable

jury could return a verdict for the nonmoving party. See Scott v. Harris, 550 U.S. 372, 380

(2007); Liberty Lobby, Inc., 477 U.S. at 248; Holcomb, 433 F.3d at 895. The party seeking

summary judgment “bears the heavy burden of establishing that the merits of his case are so

clear that expedited action is justified.” Taxpayers Watchdog, Inc., v. Stanley, 819 F.2d 294,

297 (D.C. Cir. 1987). “Until a movant has met its burden, the opponent of a summary judgment

motion is under no obligation to present any evidence.” Gray v. Greyhound Lines, East, 545

F.2d 169, 174 (D.C. Cir. 1976). When a motion for summary judgment is under consideration,

“the evidence of the non-movant[s] is to be believed, and all justifiable inferences are to be

drawn in [their] favor.” Liberty Lobby, Inc., 477 U.S. at 255; see also Mastro v. Potomac

Electric Power Co., 447 F.3d 843, 849-50 (D.C. Cir. 2006); Aka v. Washington Hospital Center,

156 F.3d 1284, 1288 (D.C. Cir. 1998) (en banc); Washington Post Co. v. U.S. Dep’t of Health

and Human Services, 865 F.2d 320, 325 (D.C. Cir. 1989). On a motion for summary judgment,

the Court must “eschew making credibility determinations or weighing the evidence.” Czekalski

v. Peters, 475 F.3d 360, 363 (D.C. Cir. 2007).

    II.      Analysis

          In seeking summary judgment here, Plaintiff argues that Ringo and Pearson “abandoned

any right to claims for invention based on the ‘715 Patent.” Mot. at 1. This is so because they

allowed their patent “to expire [by] failing to pay the maintenance fees required by 35 U.S.C. §

41(b), [which] resulted in abandonment of any right to claim priority of invention under 35

U.S.C. § 291.” Id. Plaintiff correctly notes that § 41(b) requires the payment of maintenance

fees “for maintaining in force all patents. . . . Unless payment of the applicable maintenance

fee is received . . . the patent will expire . . . .” There is no dispute that such fees were not timely

paid, rendering the patent expired. See Opp. at 2.
                                                   2
        Both sides agree, however, that § 41(c) provides an escape hatch that permits late

payment of maintenance fees within twenty-four months “if the delay is shown to . . . have been

unintentional” or at any time “if the delay is shown to . . . have been unavoidable.” Ringo and

Pearson filed a petition in May 2011 with the USPTO to have their patent right reinstated under

the “unintentional” provision. Opp. at 2; Mot. at 5 This was dismissed in October 2011. Id.

That same month they filed a second petition under the “unavoidable” provision, which petition

is still pending. Id.

        Plaintiff believes that “[t]he disposition of the second petition will almost certainly be

another denial.” Mot. at 5. As a result, Plaintiff argues, Ringo and Pearson will be “estopped

from showing priority of invention of the ‘715 Patent due to their abandonment of any claim to

the invention.” Id. at 6. If, contrary to Plaintiff’s beliefs, Ringo and Pearson do prevail in their

petition, Plaintiff’s central argument on this issue will be undermined. Ringo and Pearson thus

ask the Court to wait until there is a “final determination by the Patent Office with respect to the

petition to reinstate the ‘715 Patent.” Opp. at 3.

        This seems the wiser course. The Court is not inclined to rule based on Plaintiff’s

prediction of what the USPTO will do, as strongly voiced as it may be. See Reply at 5

(Defendants’ efforts “most certainly futile”). This is particularly so given that the basis of the

ruling would be the expiration of the patent. If the USPTO reinstates it, the Court’s ruling would

make no sense. Should Plaintiff be correct in its expectation, it may refile its Motion, and the

parties need not waste time speculating about the USPTO’s determination. Should Plaintiff be

incorrect, it would have to reformulate its arguments.

        Finally, given the current posture of the case, the Court believes a status conference with

all parties to discuss scheduling would be beneficial.



                                                     3
   III.      Conclusion

          The Court, accordingly, ORDERS that:

          1. Plaintiff’s Motion is DENIED WITHOUT PREJUDICE; and

          2. All parties shall appear for a status conference on April 4, 2012, at 10:30 a.m. in

             Courtroom 19.

IT IS SO ORDERED.




                                                        /s/ James E. Boasberg
                                                        JAMES E. BOASBERG
                                                        United States District Judge
Date: March 20, 2012




                                                   4
