Information Exchange Systems, Inc. v. First Bank National Ass'n

994 F.2d 478, 1993 WL 177685
CourtCourt of Appeals for the Eighth Circuit
DecidedMay 28, 1993
DocketNo. 92-3132
StatusPublished
Cited by5 cases

This text of 994 F.2d 478 (Information Exchange Systems, Inc. v. First Bank National Ass'n) is published on Counsel Stack Legal Research, covering Court of Appeals for the Eighth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Information Exchange Systems, Inc. v. First Bank National Ass'n, 994 F.2d 478, 1993 WL 177685 (8th Cir. 1993).

Opinion

MORRIS SHEPPARD ARNOLD, Circuit Judge.

The events as recounted by the parties are difficult to reconstruct. Nonetheless, what follows is a factual summary that is as accurate as we can make it, given the state of the record submitted to us.

Ronald Johnson originally owned three independent but related corporations — -Information Exchange Systems (IXI), IXI Laboratories (Labs), and Qwix Media (Qwix). IXI is a research company and holds various patents related to magnetic tape recording (it was previously a subsidiary of Memorex). Labs is a licensee of IXI and manufactures recording and tape duplication equipment (computer diskettes) using the patents owned by IXI. Qwix puts data onto computer disk[481]*481ettes using equipment acquired from Labs (essentially, as we understand it, Qwix is a publisher for software originated by others).

In 1984, Labs borrowed money from a predecessor bank of what is now First Bank. The loan was secured by an interest in the assets of Labs. That loan vras also later guaranteed by Qwix; the guaranty was secured by an interest in the assets of Qwix. In 1985, Qwix itself borrowed money from a second predecessor bank of what is now First Bank. Both of these predecessor banks were owned in part by a holding company bank that later merged the predecessor banks into what is now First Bank.

By late 1985 and early 1986, the holding company bank had placed both Labs and Qwix into “workout,” which is evidently a state of control by the bank in which the operations of Labs and Qwix were directed, or at least closely supervised, by the bank. Eventually, the bank threatened to foreclose on the collateral for the loan to Labs. The bank gave February 6, 1987, as the deadline for Labs’s repayment of the outstanding loan. On that day, however, instead of foreclosing on the collateral, the bank sold the loans of both Labs and Qwix, including the bank’s security interests, to two individuals, Ronald Fletcher and Richard McNamara (for the sake of simplicity, F & M). The locks on the buildings holding IXI, Labs, and Qwix were changed on that day, and F & M evidently took physical possession of the buildings and their contents at that time. F & M eventually foreclosed on the collateral for the loans and formed other businesses with the assets of Labs and Qwix obtained through the foreclosure.

In 1991, through two lawsuits that were subsequently consolidated, IXI, Labs, and Qwix sued First Bank in federal court. They asserted federal claims relating to intellectual pi'operty (trademarks, copyrights, and patents), antitrust law, racketeering, and unlawful banking practices. They also asserted claims under state statutes and common law. First Bank moved for summary judgment in April and May, 1992. In July, 1992, the trial court granted summary judgment to First Bank on all of the federal claims and declined to exercise jurisdiction over the state claims. The trial court therefore dismissed the federal claims with prejudice and dismissed the state claims without prejudice. The trial court subsequently denied a motion to reconsider. The plaintiffs appeal.

The plaintiffs contend, initially, that summary judgment was inappropriate while discovery was incomplete. The plaintiffs then assert, as to each of the federal claims, that even with the discovery accomplished at the time of the motions for summary judgment, enough evidence was presented to establish the existence of genuine issues of material fact. The plaintiffs apparently do not appeal the trial court’s decision to decline jurisdiction over the state claims. We affirm the trial court1 in all respects.

I.

In its opinion granting summary judgment to First Bank, the trial court noted that although the plaintiffs had argued “that the motions for summary judgment are premature” in view of discovery disputes that had only recently been resolved by a magistrate, the plaintiffs did not “detail what discovery is outstanding or how it relates to the current motions.” The trial court declined, therefore, to postpone ruling on the summary judgment motions.

In its opinion denying reconsideration of the ruling on summary judgment, the trial court stated that the plaintiffs “now present detailed materials concerning [the] outstanding discovery ... [but] have not shown why these materials were unavailable before” (emphasis added). The trial court further stated that the plaintiffs “have not shown that discovery subsequently produced or requested would be material to the outcome.” The trial court therefore rejected the outstanding discovery as a basis for reconsideration of the ruling on summary judgment.

The plaintiffs’ responses to the summary judgment motions were not submitted with the record, so we do not know exactly what the plaintiffs said in their briefs about the outstanding discovery. During the hearing [482]*482on the summary judgment motions, the only details given to the trial court on that point were that the magistrate had just granted the plaintiffs “access specifically to communications between the bank and [F & M] that we have not previously been given” (emphasis added). (The magistrate’s order grants access to communications between the bank or its counsel and F & M or their counsel “regarding any matter relating directly or indirectly” to Labs or Qwix, except for documents constituting work product or protected by attorney-client privilege.) Counsel for the plaintiffs then stated, “Clearly this is too early to be saying that this is all we know or all we can discover about these transactions.”

Given the vagueness of the plaintiffs’ statements to the trial court, and the trial court’s own remarks that the briefs “relied heavily upon discovery undertaken in earlier state court actions,” we affirm the trial court’s refusal to delay ruling on the summary judgment motions. We turn, then, to the merits.

II.

The predicate for all of the plaintiffs’ claims is that it was actually First Bank that took over the three businesses on February 6,1987, and that F & M were only the bank’s agents in that takeover, since they did not actually obtain ownership of the outstanding loans, and the concomitant security interests, until nearly two weeks later, when all of the requisite payments were made to the bank and F & M took physical possession of the documents relating to the outstanding loans. As to the intellectual property claims, then, the plaintiffs contend that use of the plaintiffs’ trademarks, copyrights, and patents after February 6,1987, was an infringement by the bank on the plaintiffs’ intellectual property rights. The plaintiffs also claim that the bank induced others to infringe the plaintiffs’ intellectual property rights. See 15 U.S.C. § 1114(1) (trademarks), 17 U.S.C. § 504(a) (copyrights), and 35 U.S.C. § 271(a) (patents).

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994 F.2d 478, 1993 WL 177685, Counsel Stack Legal Research, https://law.counselstack.com/opinion/information-exchange-systems-inc-v-first-bank-national-assn-ca8-1993.