Huang et al v. Marklyn Group Inc

Filing 112

ORDER granting in part and denying in part 106 Motion to Amend/Correct/Modify, by Judge Robert E. Blackburn on 7/29/2014.(trlee, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Robert E. Blackburn
Civil Case No. 11-cv-01765-REB-BNB
YAO-HUNG HUANG, and
BIG TIME AUTO PARTS MANUFACTURING, INC., a Taiwan corporation,
Plaintiffs,
v.
MARKLYN GROUP INC., d/b/a ALPENA, a Canadian corporation,
Defendant.

ORDER
Blackburn, J.
The matter before me is Defendant Marklyn Group, Inc.’s Motion To Clarify
Order Re 702 Experts [#106],1 filed July 23, 2014.2 Although purportedly seeking
clarification of my Order Re: Rule 702 Motions [#103], filed July 18, 2014, defendant
essentially seeks reconsideration of that order. Thus construed, I grant the motion in
part and deny it in part.
The bases for granting a motion to reconsider are exceptionally limited:
Grounds warranting a motion to reconsider include (1) an
intervening change in the controlling law, (2) new evidence
previously unavailable, and (3) the need to correct clear
error or prevent manifest injustice. Thus, a motion for

1

“[#106]” is an example of the convention I use to identify the docket number assigned to a
specific paper by the court’s case management and electronic case filing system (CM/ECF). I use this
convention throughout this order.
2

Given the time constraints inherent to this matter, which is set to commence trial next Monday, I
exercise my discretion pursuant to D.C.COLO.LCivR 7.1(d) to rule on the matter without awaiting the
benefit of a response.

reconsideration is appropriate where the court has
misapprehended the facts, a party’s position, or the
controlling law. It is not appropriate to revisit issues already
addressed or advance arguments that could have been
raised in prior briefing.
Servants of the Paraclete v. Does, 204 F.3d 1005, 1012 (10th Cir. 2000) (citations
omitted). Defendant raises three arguments in its motion: (1) that the court erroneously
stated that defendant does not assert a defense of anticipation;3 (2) that the court
misconstrued defendant’s arguments regarding the functionality of the two allegedly key
elements of the patented design; and (3) that Mr. Railsback should be allowed to testify
as to the testing he performed despite the court’s ruling. I consider these arguments in
turn.
Regarding anticipation, it appears clear to this court that defendant has raised
and preserved this affirmative defense in its answer and, more importantly at this stage
of the proceedings, in the Final Pretrial Order ([#100], filed July 11, 2014). Plaintiff’s
allegations in the Final Pretrial Order clearly address such a defense, and the parties
have submitted stipulated instructions regarding anticipation. Thus, it does appear that
the court misconstrued defendant’s position regarding whether it continues to assert the
affirmative defense of anticipation. To that extent, the motion is granted, and the court
affirms that defendant is entitled to present an affirmative defense of anticipation at trial.
Regarding the affirmative defense of functionality, however, the court reaches a
different conclusion. This affirmative defense requires that defendant prove by clear

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Defendant also points out that it has raised the affirmative defense of inequitable conduct. That
issue was not addressed in the 702 motions and thus forms no part of the court’s order ruling on those
motions.

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and convincing evidence that the patented design as a whole is functional. Hupp v.
Siroflex of America, Inc., 122 F.3d 1456, 1460 (Fed. Cir. 1997). Plaintiffs plainly
raised this issue in their 702 motion, claiming that Mr. Railsback’s report did not support
such a defense. (See Motion To Exclude Expert Opinion Testimony Under Fed. R.
Evid. 702 § II.C.1 at 14-16 [#87], filed June 2, 2014.) In response, defendant clearly
stated that it was asserting that the two allegedly key features of the patented design –
the forward-facing orientation and side-emitting illumination of the LED attached to the
flexible strip – are functional and therefore should not be considered as part of the
claimed ornamental design. (See Defendant Marklyn Group, Inc.’s Response to
Motion To Exclude Opinion Testimony § IV at 8-10 [#88], filed June 24, 2014.)
Indeed, defendant argued that Mr. Railsback’s report
says only that the two features addressed, side emitting and
forward facing lens, are necessary features for the intended
functions of the product. It does not state that the ‘780
Patent is invalid or that any particular aspect of the forward
facing or edge mounting as shown in the ‘780 Figs. cannot
be a design.
....
. . . . Marklyn and its experts fully understand that a
functional feature . . . can also have a unique design or at
least contribute to a unique design. Their investigation and
the results are useful in considering and resolving the issue
whether two features of the claimed design are functional.
(Id. at 9-10.) The court relied on defendant’s representations about the import of Mr.
Railsback’s report in ruling on the expert motions.
Under the guise of seeking clarification, defendant now switches tactics, arguing
that these two allegedly functional features are the entire design and thus that a
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defense of functionality should be permitted to be presented to the jury. I find nothing in
any prior representation to this court, either in writing or orally during oral arguments on
the Rule 702 motions, that would in any way suggest to this court or opposing counsel
that such was the nature and import of defendant’s arguments, such that the court
simply has misunderstood defendant’s position. Especially at this late juncture, it would
be unfair and unduly prejudicial to both plaintiffs and this court to allow defendant to
continue to move the target to attempt to surmount or circumvent the court’s rulings.
Moreover, I noted in my order on the expert motions defendant’s assertion that it
continued to assert a defense of functionality. Nevertheless, I stated that such a
defense was not preserved in the Final Pretrial Order. (See Order Re: Rule 702
Motions at 11 n.10 [#103], filed July 18, 2014.) Defendant has not addressed this
aspect of the court’s ruling at all. As stated in my order, I perceived nothing in the Final
Pretrial Order to support the assertion of a functionality defense going beyond these two
features. (Id.) Having again scoured the Final Pretrial Order, it is clear that defendant
has focused on the two allegedly key features but has never asserted that they
constitute the entirety of the design or otherwise that the design as a whole is functional.
Accordingly, this aspect of the instant motion will be denied.
Finally, defendant asks that Mr. Railsback still be permitted testify regarding the
illumination and visibility testing he performed on defendant’s accused product because
Rule 702 allows an expert to testify in the form of an opinion “or otherwise.” However,
defendant’s argument fails to consider the remainder of Rule 702, which requires, inter
alia, that the expert’s knowledge “will help the trier of fact to understand the evidence or

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to determine a fact in issue.” FED. R. EVID. 702(a). As clearly set forth in my order
ruling on the Rule 702 motions, the results of Mr. Railsback’s testing are not relevant to
any fact in issue in this case. Because the patent-in-suit disclaims light emission as part
of the patented design, testimony regarding the illuminance or visibility afforded by the
particular configuration of the LEDs would not be helpful to the jury. For this reason, I
continue to adhere to my conclusion that this testimony is inadmissible.
THEREFORE, IT IS ORDERED that Defendant Marklyn Group, Inc.’s Motion
To Clarify Order Re 702 Experts [#106], filed July 23, 2014, is GRANTED IN PART
and DENIED IN PART as follows:
1. That the motion is GRANTED insofar as it seeks assurance that defendant
may present the affirmative defense of anticipation at trial; and
2. That in all other respects, the motion is DENIED.
Dated July 29, 2014, at Denver, Colorado.
BY THE COURT:

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