Zest IP Holdings, LLC et al v. Implant Direct MFG. LLC et al

Filing 396

ORDER Denying Defendants' Application to Conduct Additional Discovery. Signed by Magistrate Judge William V. Gallo on 3/3/2014. (srm)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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ZEST IP HOLDINGS, LLC,
et al.,

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Plaintiffs,
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v.

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IMPLANT DIRECT MFG., LLC,
et al.
Defendants.

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Civil No.10-0541-GPC(WVG)
ORDER DENYING DEFENDANTS’
APPLICATION TO CONDUCT
ADDITIONAL DISCOVERY

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On February 7, 2014, in response to the Court’s

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suggestion of January 31, 2014, Defendants filed a State-

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ment of Pending Discovery Issues. [Docket No. 366]. On

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February 21, 2014, Defendants submitted a letter applica-

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tion to the Court seeking to conduct additional discovery

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in this case. On February 26, 2014, Plaintiffs submitted

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a letter in opposition to Defendants’ letter application.

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I

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INTRODUCTION

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Defendants contend that they have pending discovery

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matters before the Court that have yet to be resolved. A
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careful review of the docket indicates that there are no

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pending discovery matters before this Court. However,

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given the history of this litigation and the numerous

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pleadings which have been filed, it is perhaps understand-

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able why Defendants may think there are unresolved dis-

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putes. But Defendants’ mistaken belief does not justify

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allowing the discovery they now seek.

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Defendants raised the present discovery issues in a

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Joint Statement Regarding Discovery, filed on May 17,

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2013. [Docket No. 217]. A hearing was held regarding these

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discovery issues on May 29, 2013. [Transcript of May 29,

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2013 hearing, Docket No. 228]. During the hearing, Defen-

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dants indicated that they intended to file several motions

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(to amend invalidity contentions and for a new Markman

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hearing) before Judge Curiel and were awaiting a ruling on

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a pending Motion For Reconsideration pertaining to the

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sufficiency

of

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[Transcript

of

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resolution of those motions would impact the discovery

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being sought by Defendants and accordingly, this Court

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took the matters under advisement pending the outcome of

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Judge Curiel’s orders. [Transcript of May 29, 2013 hearing

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at 45, ll. 12-17; at 55, ll. 9-13].

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ery matters were taken under advisement, it became evident

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to the Court in papers filed subsequently by the parties,

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or in orders issued by Judge Curiel, that the discovery in

Plaintiffs’
May

29,

2013

infringement
hearing

at

contentions.
53-56]1/.

The

Although the discov-

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1/

All references to page numbers are to the Court’s CM/ECF
pagination, unless otherwise noted.
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question had either taken place or would be conducted. The

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Court, having not heard from Defendants since May 2013

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about the lack of ruling from this Court and having not

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received any objection about the lack of discovery from

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Plaintiffs, naturally assumed that the discovery had been

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conducted.
Defendants

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had

the

opportunity

to

conduct

the

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discovery that is now being requested, when it was appro-

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priate to do so. For whatever reason, they chose not to

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conduct the discovery or file timely objections to the

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discovery which was provided by Plaintiffs. The fact

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remains that the discovery requested by Defendants, which

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should have been, and could have been, accomplished much

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earlier in this litigation, if allowed to be conducted

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now, would seriously prejudice Plaintiffs, require enor-

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mous

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undermine the Court’s calendaring of this already lengthy

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litigation.

amounts

of

additional

seriously

DEFENDANTS’ DISCOVERY REQUESTS

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and

II

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discovery,

Defendants have identified three topics about which
they now seek discovery:

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1. Plaintiffs’ infringement contentions relating to

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the new internal connection GPS cap and liner and the

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basis for any such contentions; 2. The invalidity of

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Plaintiffs’

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regarding the new internal connection GPS cap and liner,

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including in the form of a Rule 30(b)(6) deposition.

patents;

3.

Plaintiff’s

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alleged

damages

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[Defendants’ Statement of Pending Discovery Issues, Docket

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No. 366, at 3, ll. 8-9, 12, 15-16].

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A. Defendants’ Request To Conduct Additional Fact
Discovery Into Plaintiffs’ Infringement Contentions
Is DENIED.

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Patent infringement analysis involves essentially

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two steps: 1) claim construction; and 2) comparison of the

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properly construed claims with the accused product(s).

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Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.

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Cir. 1998). Judge Burns, who was assigned this case before

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Judge Curiel, held a claim construction hearing on April

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10, 2012 [Docket No. 88] and issued his Claim Construction

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Order

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thereafter, Defendants filed a Motion For Reconsideration

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[Docket No. 100] which was denied by Judge Burns. [Docket

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No. 102]. Once Judge Burns construed the claim terms, the

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first part of the analysis was completed. As Plaintiffs’

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counsel has stated, the claim terms have not changed since

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April 10, 2012.2/

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on

May

16,

2012.

[Docket

No.

99].

Immediately

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As to the second part of the analysis, Defendants’

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entire argument to justify the request for additional

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discovery in this area is that Plaintiff has added an

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entirely “new” accused product in the litigation after the

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discovery cutoff. Defendants continue to characterize the

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“new” GPS internal male connection as an entirely new

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accused product and contends that Plaintiffs have changed

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2/

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Although Defendants stated at the May 29, 2013, hearing that
they intended to file a motion for a new Markman Hearing, no such
motion was ever filed. Accordingly, as Plaintiffs argue, the claim
construction ordered by Judge Burns on May 16, 2012, is and has been
the “law of the case” as to the construed terms.
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their infringement theory. [Defendants’ February 21, 2014

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letter]. This is simply not the case and Defendants’

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persistent mischaracterization of the “new” GPS connection

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will not change its true nature. Judge Curiel, using

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language such as “the Court disagrees” and “the Court

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rejects,”

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inclusion of a “new” GPS male internal connection is not

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an entirely new accused product. [Order, Docket No. 301 at

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14, ll. 11-12, 24; at 15. ll. 1, 11].

has

stated

quite

clearly

that

Plaintiffs’

Moreover, as Judge

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Curiel stated in ruling on Defendants’ Motion to Further

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Amend Invalidity Contentions, “the Court is not convinced

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that

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theory.”

Plaintiffs

are

yet

pursuing

a

new

infringement

[Order, Docket No. 362 at 13, ll. 13-14].

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Defendants already have conducted discovery about

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Plaintiffs’ infringement and amended infringement conten-

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tions. Plaintiffs have indicated that they will “update

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their interrogatory responses” in light of the amended

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infringement

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hearing at 20, ll. 15-16; at 23, ll. 23-24] and apparently

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did so without any insufficiency objection by Defendants.

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[Plaintiffs’ Opposition to Defendants’ Motion for Recon-

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sideration, Docket No. 234 at 10, ll. 1-9; Order Denying

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Defendants’ Motion for Reconsideration, Docket No. 248 at

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4, ll. 22-24; see also Transcript of January 4, 2013

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hearing before Judge Curiel, Docket No. 184 at 24, ll. 17-

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23]. The Court also

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discovery hearing, Defendants have not raised with the

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Court any objections to Plaintiffs supplemental responses.

contentions

[Transcript

of

May

29,

2013

notes that since the May 29, 2013

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Accordingly, other than expert discovery as ad-

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dressed in the Seventh Amended Case Management Conference

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Order, [Docket No. 361, no additional discovery in this

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area is justified.

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B. Defendants’ Request To Conduct Additional Fact
Discovery Regarding The Invalidity Of Plaintiffs’
Patents is DENIED.

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Plaintiffs cite the seminal case of Graham v. John

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Deere Co., 383 U.S. 1, 17 (1966), to argue correctly that

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invalidity of a patent is separate and distinct from, and

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has nothing to do with, the accused products. [Joint

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Statement Regarding Discovery, Docket No. 217 at 8, ll.

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19-22; Plaintiffs’ Feb. 26, 2014 letter]. Invalidity of a

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patent may be raised when the patentee fails to comply

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with

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Sections 101-103, and 112. That invalidity of a patent

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does not depend on the nature of the accused product is

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basic patent law. It is so basic, that it needs no further

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explanation here. Counsel for Plaintiffs repeatedly have

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made this point. [Transcript of January 4, 2013 hearing

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before Judge Curiel, Docket No. 184 at 18, ll. 12-13, at

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20, ll. 17-23; Transcript of May 29, 2013 hearing at 21,

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ll. 3-25; Plaintiffs’ Feb. 26, 2014 letter]. For all of

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the reasons set forth in Plaintiffs’ Feb. 26, 2014 letter,

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the time has come and gone for Defendants to conduct their

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invalidity discovery.

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any

of

the

statutory

requirements

set

forth

in

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Accordingly, other than expert discovery as ad-

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dressed in the Seventh Amended Case Management Conference

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Order, [Docket No. 361], no additional discovery in this

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area is justified.

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C. Defendants’ Request To Conduct Additional Fact
Discovery Regarding Plaintiffs’ Damages Evidence As
It Relates To The “New” GPS Internal Male Connection
Is DENIED.
In the Joint Statement Regarding Discovery, filed on

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May 17, 2013, Plaintiffs made clear that they “are amena-

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ble to responding to a contention interrogatory regarding

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damages relating to the new GPS internal male.” [Docket

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No. 217 at 9, ll. 26-27, at 10, ll. 1-2]. The Court is

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unaware if Defendants propounded a contention interroga-

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tory, as offered by Plaintiffs. Whether Defendants did or

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not, it is now too late to take additional fact discovery

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on damages regarding the “new” GPS internal male connec-

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tion. Moreover, Defendants’ argument to justify additional

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damages discovery is based on the false premise that there

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is an entirely new accused product in the case which was

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introduced after fact discovery closed. [Transcript of May

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29, 2013 hearing at 41, ll. 22-25, at 42, at 43, ll. 1-6].

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As indicated above, this simply is not the case.

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D. Defendants’ Request To Designate An Expert To
Testify About The Invalidity Of Plaintiffs’ Patents
Is DENIED.

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Defendants’ February 21, 2014 letter requests that

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Defendants be allowed to designate an expert to testify

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about the invalidity of Plaintiffs’ patents. Plaintiffs’

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February 26, 2014 letter opposes the request.

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As Defendants acknowledge in their letter, the time

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to designate experts expired on December 15, 2011, over

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two years ago. [Case Management Conference Order, Docket

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No. 27 at para. 13]. Defendants did not designate any such

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experts. As discussed above, invalidity of a patent is not

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a moving target and does not rely at all upon the nature

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of the accused products. Plaintiffs’ patents have not

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changed one iota throughout the course of this litigation.

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Defendants’

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products and shifted their infringement contentions, even

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if true, is weak support for the request they now make.

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See Wong v. University of California, 410 F.3d 1052, 1060

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(9th Cir. 2005); 02 Micro Intern Ltd. V. Monolithic Power

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Systems, Inc., 467 F.3d 1355, 1368-1369 (9th Cir. 2006).

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IT IS SO ORDERED.

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DATED:

argument

that

Plaintiffs

have

added

new

March 3, 2014

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Hon. William V. Gallo
U.S. Magistrate Judge

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