Teashot.LLC v. Green Mountain Coffee Roasters, Inc. et al

Filing 179

ORDER Defendants Motion for Summary Judgment ECF No. 76 is GRANTED; Plaintiffs Motion for Partial Summary Judgment ECF No. 136 is DENIED; and The Clerk shall enter judgment in favor of Defendants on all claims. Defendantsshall have their costs, by Judge William J. Martinez on 2/6/2014.(evana, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge William J. Martínez
Civil Action No. 12-cv-0189-WJM-KMT
TEASHOT LLC, a Colorado limited liability company,
Plaintiff,
v.
GREEN MOUNTAIN COFFEE ROASTERS, INC., a Delaware corporation,
KEURIG, INC., a Delaware corporation, and
STARBUCKS CORPORATION, a Washington corporation,
Defendants.

ORDER ON MOTIONS FOR SUMMARY JUDGMENT

Plaintiff Teashot LLC (“Plaintiff” or “Teashot”) owns the rights to United States
Patent No. 5,895,672 (the “‘672” Patent). In this action, Teashot alleges that
Defendants Green Mountain Coffee Roasters, Keurig, and Starbucks Corporation
(collectively, “Defendants”) have infringed on the ‘672 Patent. (ECF No. 1 ¶¶ 49-53.)
Before the Court are Defendants’ Motion for Summary Judgment (ECF No. 76)
and Plaintiff’s Motion for Partial Summary Judgment (ECF No. 136). For the reasons
set forth below, Defendants’ Motion is GRANTED and Plaintiff’s Motion is DENIED AS
MOOT.
I. LEGAL STANDARD
Summary judgment is appropriate only if there is no genuine issue of material
fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P.
56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Henderson v. Inter-Chem

Coal Co., Inc., 41 F.3d 567, 569 (10th Cir. 1994). Whether there is a genuine dispute
as to a material fact depends upon whether the evidence presents a sufficient
disagreement to require submission to a jury or conversely, is so one-sided that one
party must prevail as a matter of law. Anderson v. Liberty Lobby, 477 U.S. 242, 248-49
(1986); Stone v. Autoliv ASP, Inc., 210 F.3d 1132 (10th Cir. 2000); Carey v. U.S. Postal
Serv., 812 F.2d 621, 623 (10th Cir. 1987).
A fact is “material” if it pertains to an element of a claim or defense; a factual
dispute is “genuine” if the evidence is so contradictory that if the matter went to trial, a
reasonable juror could return a verdict for either party. Anderson, 477 U.S. at 248. The
Court must resolve factual ambiguities against the moving party, thus favoring the right
to a trial. Houston v. Nat’l Gen. Ins. Co., 817 F.2d 83, 85 (10th Cir. 1987).
II. BACKGROUND
In the 1980s and 90s, specialized forms of coffee, such as espresso, grew in
popularity. (ECF No. 48 at 6.) Espresso is produced in special machines that operate
at a higher temperature and pressure than a standard coffee maker. (Id.) For single
serving espresso beverages, coffee was typically placed into “pods” which consisted of
“an enclosed water-permeable pod or package which contains a pre-measured amount
of ground coffee that is preferably compressed to provide a consistent measure of
coffee for production of espresso beverages.” (‘672 Patent (ECF No. 78-1) at 1.)
Barry Patrick Wesley Cooper is an “International Tea Master with decades of
experience in tea.” (ECF No. 50 at 6.) In early 1997, he began to develop a “novel
invention” whereby one could use an espresso machine to make a cup of tea in a

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fraction of the time required to make tea using conventional methods. (Id.) Mr. Cooper
filed a patent application for this invention on January 13, 1998 and, on April 20, 1999,
was granted U.S. Patent No. 5,895,672 entitled “Product and Process for Preparing a
Tea Extract”. (Id.) In 2011, Mr. Cooper formed Teashot LLC and assigned the ‘672
Patent to the LLC. (Id. at 7.)
The ‘672 Patent covers a process for the brewing of tea in a coffee brewing
device and, particularly, an espresso machine. (‘672 Patent at 1.) The purpose of the
invention covered by the ‘672 Patent is to use existing coffee-espresso technology to
produce high quality tea-based beverages that are “consistent, fast, easy, [and] cost
efficient”. (Id. at 2.) The ‘672 Patent’s Claims1 cover (1) the tea extraction container
(Claims 1-19); (2) the tea composition (Claim 20); and (3) the method for producing a
tea extract using a coffee brewing device (Claims 21-26).
After obtaining the ‘672 Patent, Mr. Cooper agreed to produce tea pods for use
in the Melitta One:One coffee brewing device. (ECF No. 112 ¶ 4.) Mr. Cooper
developed, and has been selling for nearly a decade, four different tea-filled pods for
use in the One:One brewer. (Id.) These pods are made entirely of filter-paper, but are
packaged for shipping in a foil packet that is marked with the ‘672 Patent. (Id.)
Plaintiff filed this action against Defendants Green Mountain Coffee Roasters,
Inc., Keurig, Inc., and Starbucks Corporation alleging that Defendants are violating the
‘672 Patent by manufacturing, selling, or offering “K-Cup” portion packs which contain
tea for use in Keurig-brand coffee brewing devices and the like. (ECF No. 1 at 15-21.)

1

Capitalization of the terms “Claim” or “Specification” means the Court is referring to
those portions of the ‘672 Patent.

3

The accused K-Cups consist of a plastic cup covered with a foil lid. (ECF No. 76 at 9.)
The tea is contained inside the K-Cup in a compartment made of filter-paper on three
sides, with the fourth side being the foil lid. (Id.) To brew a cup of tea, a user inserts
the K-Cup into a Keurig brewer and closes the lid. (Id.) When the brewer is closed, a
top and bottom needle puncture the K-Cup. (Id.) The top needle remains inside the foil
lid and injects water into the pack. (Id.) The water flows through the tea composition,
then through the filter paper, and finally exits the hole in the plastic cup made by the
bottom needle. (Id.)
After Defendants filed their Answers to Plaintiff’s Complaint, the Court held a
Scheduling Conference. (ECF No. 39.) The parties agreed on dates for the exchange
of infringement and invalidity contentions, and informed the Court that an early
Markman hearing would be of assistance in resolving the case. (ECF No. 25 at 9.) The
Court accepted the parties’ agreement and entered the parties’ Proposed Scheduling
Order as its own. (ECF No. 40.)
In accordance with the Court’s Scheduling Order, Plaintiff provided Defendants
with its preliminary infringement contentions on May 1, 2012. (ECF No. 51-2.) Therein,
Plaintiff alleged that Defendants were infringing on the following Claims: 1-4, 6-8, 12,
14, and 20-23. (Id. at 1.) Of these Claims, Claims 1 and 21 are independent; the
remaining Claims depend, either directly or indirectly, on these independent Claims.
On June 22, 2012, the parties filed their Joint Statement of Stipulated and
Disputed Claim Terms and Phrases for Construction and Proposed Constructions. (ECF
No. 44.) The parties stipulated to the definitions of four Claim terms or phrases, and

4

identified eight terms or phrases that should be construed by the Court. (ECF No. 44-2.)
On July 20, 2012, the parties filed briefs arguing in favor of their respective proposed
constructions. (ECF Nos. 48 & 50.) On August 21, 2012, the parties filed response
briefs on the construction of these eight terms and/or phrases. (ECF Nos. 56 & 57.) The
Court held a half-day Markman hearing on September 28, 2012. (ECF No. 63.)
On November 19, 2012, the Court issued its Order on Claim Construction
(“Markman Order”). (ECF No. 67.) Relevant to the issues presented in the instant
Motions, the Court construed the phrase “said sealed body is constructed of a waterpermeable material which allows flow of a fluid through said sealed body to produce a
tea extract from said tea composition” which is contained in Claims 1 and 21 to mean
“the portions of the sealed body into which fluid flows and out of which fluid flows are
water-permeable material which allows flow of a fluid through said sealed body to
produce a tea extract from said tea composition”. (Id. at 11.)
After the Court entered its Markman Order, it held a second scheduling
conference. (ECF No. 74.) The Court’s post-Markman Scheduling Order mandated that
fact discovery would close on April 19, 2013, expert discovery on June 21, 20132, and
the dispositive motion deadline was set for July 19, 2013. (ECF No. 75 at 2-3.)
On May 24, 2013, Defendants filed a Motion for Summary Judgment. (ECF No.
76.) Plaintiff filed its Response on June 17, 2013 (ECF No. 107), Defendants filed a
Reply on July 5, 2013 (ECF No. 123), and Plaintiff filed a Sur-reply on July 18, 2013
(ECF No. 135).

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The deadline for expert discovery has since been extended multiple times. (See ECF
Nos. 99 & 178.)

5

Plaintiff filed a Motion for Partial Summary Judgment on July 19, 2013. (ECF
No. 136.) Defendants filed their opposition on August 19, 2013 (ECF No. 149), Plaintiff
filed its Reply on September 13, 2013 (ECF No. 160), and Defendants filed a Sur-reply
on September 23, 2013 (ECF No. 172). Both Motions are ripe for review.
III. ANALYSIS
Defendants claim that they are entitled to summary judgment on Plaintiff’s claim
for patent infringement. (ECF No. 76 at 20.) Infringement claims fall into two broad
categories: literal infringement and infringement under the doctrine of equivalents.
“Literal infringement exists if each of the limitations of the asserted claim(s) . . . [is]
found in, the accused device.” Baxter Healthcare Corp. v. Spectramed, Inc., 49 F.3d
1575, 1583 (Fed. Cir. 1995). Alternatively, where a product does not literally infringe, a
court may find infringement under the doctrine of equivalents if there is “‘equivalence’
between the elements of the accused product or process and the claimed elements of
the patented invention.” Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 523 F.3d
1304, 1312 (Fed. Cir. 2008) (quoting Warner–Jenkinson Co. v. Hilton Davis Chem. Co.,
520 U.S. 17, 21 (1997)).
A determination of infringement is a two-step process. The first step is
determining the meaning and scope of the asserted claims, which is a matter of law.
Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-56 (Fed. Cir. 1998) (en banc).
The Court undertook this first step when it held a Markman hearing on September 28,
2012, and then issued its Claim Construction Order on November 19, 2012. (ECF No.
67.)

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The second step of the infringement analysis involves comparing the accused
device to the properly construed claims. Cybor, 138 F.3d at 1454. This analysis is a
question of fact. Wright Med. Tech., Inc. v. Osteonics Corp., 122 F.3d 1440, 1443
(Fed. Cir. 1997). A device literally infringes if each element of the asserted claim is
found in the accused device. Id. Alternatively, a device may infringe under the doctrine
of equivalents if it contains elements “equivalent to each claimed element of the
patented invention.” Warner-Jenkinson, 520 U.S. at 40.
Defendants move for summary judgment on Plaintiff’s claim for literal
infringement and under the doctrine of equivalents, and the Court will address each in
turn below.
A.

Literal Infringement
For a plaintiff to prevail on a claim for literal infringement, “every limitation set

forth in a claim must be found in an accused product, exactly.” Southwall Techs., Inc.
v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995). Summary judgment on
infringement is appropriate when “no reasonable jury could find that every limitation
recited in a properly construed claim . . . [is] found in the accused device.” PC
Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1664 (Fed. Cir. 2005).
Plaintiff alleges that Defendants’ K-Cups literally infringe on claims 1 and 21,
each of which include the following language: “said sealed body is constructed of a
water-permeable material which allows flow of a fluid through said sealed body to
produce a tea extract from said tea composition”. (‘672 Patent, cols. 18-20.) The Court
previously construed this phrase to mean that “the portions of the sealed body into

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which fluid flows and out of which fluid flows are water-permeable material which allows
flow of a fluid through said sealed body to produce a tea extract from said tea
composition”. (Markman Order at 11.)
Defendants allege that the accused K-Cups do not literally infringe on Claims 1
and 21 of the ‘672 Patent because the foil lid on the accused K-cups—the portion of the
sealed body into which water flows—is water-impermeable. (ECF No. 76 at 12.)
Defendants contend that, because the lid is made of foil, which is water-impermeable,
there can be no literal infringement. (Id.) Defendants point out that Plaintiff’s sole
owner, who is also the inventor of the ‘672 Patent, admitted in his deposition that the
foil lid of the K-Cup is water-impermeable. (ECF No. 78-10)pp. 191-93.)
Plaintiff does not dispute that, as manufactured, the lid of the K-Cup is a solid
piece of foil, which is water-impermeable. (ECF No. 107 at 19-20.) Instead, Plaintiff
contends that the foil lid becomes water-permeable when the K-Cup is used because
the lid is punctured by a needle during usage. (Id.) Plaintiff contends that, once
perforated, the foil lid is water-permeable. (Id.) Thus, the key dispute between the
parties is whether the foil lid of the K-Cup is water-permeable after it has been
punctured by the needle of the brewing device.
In support of its argument that the perforated lid is water-permeable, Plaintiff
cites to Figure 4 of the ‘672 Patent, which is a drawing of a “rigid container having
multiple tea extraction containers connected to each other at the side of the sealed
bodies, from top to bottom, around an axial member”. (‘672 Patent col. 8 lns. 1-3.)
Plaintiff points out that, in its Markman Order, the Court noted that the tops and bottoms
of each of these rigid metal “pods” was perforated, and the Court held that the tops and
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bottoms were water-permeable because of this perforation. (Markman Order at 10.)
Plaintiff also points to the portion of the ‘672 Patent which states that “[t]he waterpermeable material suitable for construction of the sealed body can be any waterpermeable material that is suitable for use with a food product, such as filter paper,
permeable plastic, tight weave metal mesh, nylon and linen.” (‘672 Patent col. 5 lns.
47-51.)
The Court agrees that certain materials made of metal alloys, including
aluminum, can be water-permeable. For example, an aluminum mesh screen could be
used in a device that resembles Figure 4 of the ‘672 Patent. But the Court sees a
fundamental difference between a metal mesh screen and a solid sheet of foil that has
been punctured. The metal mesh screen is designed to allow fluid to flow through it;
indeed, the size of the perforation must be carefully calculated to be large enough to
allow the fluid to flow, yet small enough to prevent leakage of the tea leaves out of the
holes. On the other hand, the foil lid of the K-Cup is designed to prevent the flow of any
substance—including water, but also air and other moisture that could cause spoilage
of the tea leaves—into the sealed body.
Defendants contend that the issue here is not what is done to the lid material,
but what the material is. (ECF No. 123 at 3.) Given the verbiage of the ‘672 Patent,
which provides that the sealed body must be “constructed of a water-permeable
material”, the Court finds this argument compelling. (‘672 Patent cols. 18-20 (emphasis
added).) Were the K-Cup constructed with a metal mesh lid, Plaintiff’s argument would
likely prevail because metal mesh is a water-permeable material, even if metal in and of
itself is not water-permeable. But it is undisputed that the lid of the K-Cup’s sealed body
9

is constructed of a solid sheet of foil, which is plainly water-impermeable. The fact that
water could conceivably flow through the solid piece of foil after it is perforated does not
change the fact that the lid is itself constructed in the first instance of a waterimpermeable material.
Moreover, patents are generally to be construed in a manner that avoids
rendering superfluous any portion of a patent claim. See Pickholtz v. Rainbow Techs.,
Inc., 284 F.3d 1365, 1373-74 (Fed. Cir. 2002). Nearly any material can be punctured
so that water can flow through the punctured surface. Were the Court to adopt
Plaintiff’s reasoning and hold that the K-Cup’s foil lid is “water-permeable” because
water can pass through the hole in the lid after the lid is punctured, the phrase
“constructed of a water-permeable material” would be so limitless as to essentially be
meaningless. The Court must avoid this construction.3 See Ethicon Endo-Surgery, Inc.
v. U.S. Surgical Corp., 93 F.3d 1572, 1578 (Fed. Cir. 1996) (refusing to read a limitation
so broadly that it would become “meaninglessly empty”).
For all of these reasons, the Court concludes that there is no genuine dispute of
fact as to whether the accused device contains all of the limitations expressed in Claims
1 and 21. The lid of the K-Cup is not constructed of a water-permeable material and,
3

Moreover, as construed by the Court, Claims 1 and 21 require that the portions of the
sealed body into which and out of which water flows be constructed of a water-permeable
material. (Markman Order at 11.) The way K-Cups are used, water does not flow through the
foil lid, even after the lid is punctured by the needle. Instead, it is undisputed that the needle
punctures the foil lid, then remains inside the sealed body and injects water directly into the tea
composition. (ECF No. 76 at 13-14.) Thus, water does not flow directly through the foil lid of
the K-Cup; it flows within the needle after it has punctured the lid, so that the injection point is
inside of the sealed body. If the needle punctured the foil lid and then withdrew so that water
flowed through the hole into the sealed body to contact the tea composition, Plaintiff’s
infringement argument would be stronger. But the record without any question shows that the
device does not function that way.

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even if it were, water flows through a needle inserted into the K-Cup, and not through
the material of the lid itself. Thus, the Court finds that Defendants are entitled to
summary judgment on Plaintiff’s claim for literal infringement with regard to Claims 1
and 21.
B.

Doctrine of Equivalents
Plaintiff argues that, if the Court finds that the K-Cups do not literally infringe on

the ‘672 Patent, the Court must consider whether there is infringement under the
doctrine of equivalents. (ECF No. 107 at 24.) A device that does not literally infringe
may nonetheless infringe under the doctrine of equivalents if “every limitation of the
asserted claim, or its ‘equivalent,’ is found in the accused subject matter, where an
‘equivalent’ differs from the claimed limitation only insubstantially.” Ethicon EndoSurgery, Inc., 149 F.3d at 1315. The Supreme Court has clearly articulated the
motivation behind the doctrine of equivalents:
[C]ourts have . . . recognized that to permit imitation of a
patented invention which does not copy every literal detail
would be to convert the protection of the patent grant into a
hollow and useless thing . . . . Outright and forthright
duplication is a dull and very rare type of infringement. To
prohibit no other would place the inventor at the mercy of
verbalism, and would be subordinating substance to form. . .
The doctrine of equivalents evolved in response to this
experience.
Graver Tank, 339 U.S. at 607.
Defendants contend that Plaintiff has waived any claim under the doctrine of
equivalents. (ECF No. 76 at 15.) Defendants point out that Plaintiff did not raise the
doctrine of equivalents in its pleadings, it did not include the doctrine of equivalents in

11

its initial infringement contentions, it did not supplement its infringement contentions to
include the doctrine of equivalents until the close of fact discovery, and it first outlined
its theory of infringement under the doctrine of equivalents two weeks after fact
discovery had closed. (Id. at 16.) Defendants contend that they were denied the ability
to conduct discovery into Plaintiff’s infringement theory based on the doctrine of
equivalents, and that this was significantly prejudicial. (Id. at 17.)
In response, Plaintiff admits that it did not specifically allege any doctrine of
equivalents claim in its Complaint, and that it did not disclose this theory of infringement
until the close of fact discovery. (ECF No. 107 at 25-26.) However, Plaintiff alleges that
this did not constitute waiver because nothing in this Court’s Scheduling Order or Local
Rules required it to disclose this theory any earlier in the litigation. (Id. at 26.)
The Court agrees with Plaintiff that its failure to specifically allege a claim under
the doctrine of equivalents in its Complaint did not, in and of itself, constitute waiver of a
claim brought under the doctrine. The Federal Circuit has never explicitly held that a
party is required to plead doctrine of equivalents, and the district courts are split as to
whether such express pleading is required. Compare U.S. Gypsum Co. v. LaFarge N.
Am., Inc., 508 F. Supp. 2d 601, 618-620 (N.D. Ill.2007) (“A plaintiff is not required to
expressly refer to the doctrine of equivalents in a complaint, alleging infringement and
citing to [the statute prohibiting infringement] is sufficient.”) with Automated Transaction
Corp. v. Bill Me Later, Inc., 2010 WL 1882264, *2 (S.D. Fla. May 11, 2010) (finding that
the Federal Circuit has implied a requirement that a doctrine of equivalents claim be
pled explicitly and allowing plaintiff to amend its complaint to do so). Given this lack of

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clear and binding guidance, the Court is unwilling to find waiver based solely on the fact
that Plaintiff failed to include the doctrine of equivalents in its pleadings.
Instead, the Court finds that Plaintiff waived its right to raise the doctrine of
equivalents by failing to timely disclose it as an infringement theory. Discovery in patent
cases—like all civil cases—is governed by the Federal Rules of Civil Procedure. Rule
26 mandates that certain items be disclosed automatically, and that any nonprivileged
matter that is relevant to a claim or defense may be obtained through discovery. Fed.
R. Civ. P. 26(a), (b). Rule 26(e) imposes an obligation on parties to conduct a
reasonable inquiry into the factual basis of their discovery responses before submitting
them to the opposing party, and also requires that a party “supplement or correct its
disclosure or response . . . in a timely manner if the party learns that in some material
respect the disclosure or response is incomplete or incorrect . . . .” Fed. R. Civ. P.
26(e)(1).
In this case, the Court’s pre-claim construction Scheduling Order directed
Plaintiff to serve “its infringement contentions, claim charts, and associated documents
on Defendants” no later than May 1, 2012.4 (ECF No. 40 at 9.) Defendants were then
required to serve their “invalidity contentions, claim charts, and associated documents

4

Plaintiff argues that the Court cannot find waiver in this case because it has no patent
local rules governing infringement contentions, including when and how they can be
supplemented. (ECF No. 107 at 26-27.) However, there are many cases in which courts,
including the Federal Circuit, have found that a party waived an infringement theory by not
asserting it in a timely manner. See Woods v. DeAngelo Marine Exhaust, Inc., 692 F.3d 1272
(Fed. Cir. 2012) (affirming district court’s exclusion of invalidity theory based on Rules 26(e) and
37(c)); Spellbound Dev. Grp., Inc. v. Pac. Handy Cutter, 2011 WL 5554312, at *5-6 (C.D. Cal.
Nov. 14, 2011) (in a case not governed by patent local rules, the court refused to permit plaintiff
to amend its response to defendant’s interrogatory regarding theories of infringement after the
close of discovery).

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on Plaintiff” by June 5, 2012. (Id.) This schedule was proposed by the parties, who
represented that they believed this schedule would “help[] ensure the efficient and
effective administration of a case.” (ECF No. 24 at 2.)
A common practice in patent law is for a defendant to serve infringement
contention interrogatories on the plaintiff, and for the plaintiff to serve invalidity
contention interrogatories on the defendant. See Woods, 602 F.3d at 1282 (discussing
the use of contention interrogatories in patent practice). The exchange of these
interrogatories early in the case helps streamline litigation, and “serve[s] an important
purpose in enabling a party to discovery facts related to its opponent’s contentions.” Id.
The Court’s Order requiring the parties to exchange infringement and invalidity
contentions effectively took the place of these contention interrogatories. Thus, the
parties’ infringement and invalidity contentions subject to these provisions of the
Scheduling Order operated as the legal and functional equivalent of responses to
interrogatories, and were therefore subject to Rule 26(e)’s requirements.
The Federal Circuit has noted that, in jurisdictions that do not have local patent
rules, “district courts have discretion to exclude evidence when a party acts in bad faith
or prejudices its adversary by deliberately delaying, or wholly failing, to respond to
contention interrogatories.” Woods, 602 F.3d at 1282 (citing Zenith Elecs. Corp. v.
WH-TV Broad., Corp., 395 F.3d 416, 420 (7th Cir. 2005)). Rule 26(e) “prohibits parties
who are aware of their deficient response from ‘hold[ing] back material items and
disclos[ing] them at the last moment.’” Id. (quoting 8A Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure § 2049.1 (3d ed. 2011)). Instead, “Rule 26(e)

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requires that as theories mature and as the relevance of various items of evidence
changes, responses to interrogatories, and particularly contention interrogatories, be
corrected or supplemented to reflect those changes.” Id. at 1280.
It is undisputed that Plaintiff did not include the doctrine of equivalents in its
original infringement contentions, served on May 1, 2012, and again failed to include
this theory in its March 7, 2013 supplement. (ECF Nos. 78-3 & 78-4.) Rather, Plaintiff
waited until the close of fact discovery on April 19, 2013 to finally include the doctrine of
equivalents in its supplemented infringement contentions. (ECF No. 78-5.) However,
even this disclosure failed to include any details regarding Plaintiff’s doctrine of
equivalents theory. (Id.) The first detailed explanation of such theory was not served
on Defendants until April 30, 2013, as part of the expert report of Dr. Maynes.5 (ECF
No. ¶ 7.)
Significant to the Court’s analysis of this issue is the fact that Plaintiff has provided
no explanation for why it failed to disclose this theory earlier. (See ECF No. 107 at 26.)
Instead, Plaintiff contends that it did not waive the right to raise the doctrine of equivalents
because nothing in the Court’s Scheduling Order specified what was required to be
included in the infringement contentions, and Defendants never complained that Plaintiff’s
infringement contentions were not specific enough. (Id.) Plaintiff also points out that
Defendants never propounded written discovery requesting Plaintiff’s position regarding
infringement under the doctrine of equivalents. (ECF No. 108 ¶ 19.)

5

Plaintiff contends that its letter to Defendants’ counsel on April 22, 2013 was an earlier
expression of its doctrine of equivalents theory. (ECF No. 108 ¶ 17.) While the April 22, 2013
letter mentioned the doctrine of equivalents, it was only a very general reference.

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The Court finds these arguments insufficient to explain Plaintiff’s late disclosure.
Plaintiff’s attorneys are experienced patent litigators, who are reasonably expected to
understand that infringement contentions—whether responsive to a contention
interrogatory, required by local patent rules, or included in a scheduling order—should
specify what infringement theories the party is pursuing. Moreover, Defendants were
not required to complain about Plaintiff’s infringement contentions or serve separate
written discovery related to Plaintiff’s infringement theories. A party has the right to
assume that opposing counsel is acting with diligence, and in compliance with the
Federal Rules of Civil Procedure, during discovery. Because Plaintiff was already
ordered by the Court to provide its infringement contentions, and required by Rule 26(e)
to timely supplement the same, Defendants were justified in believing that Plaintiff’s
disclosures contained all of the infringement theories it was pursuing in the case.6
Having considered all of the above, the Court finds that Plaintiff’s late disclosure
of its intent to pursue the doctrine of equivalents as an infringement theory violated
Rule 26(e). Therefore, the question becomes whether such late disclosure constitutes
waiver of Plaintiff’s ability to raise the doctrine of equivalents. Rule 37(c)(1) governs the
use of late disclosed evidence and states: “If a party fails to [supplement an discovery
disclosure] as required by Rule [26(e)], the party is not allowed to use that information .

6

Plaintiff also argues that Defendants cannot object to its supplemental infringement
contentions filed at the close of discovery because Defendants served their own supplemental
invalidity contentions at the same time. (ECF No. 107 at 26.) However, had Plaintiff objected
to Defendants’ late supplementation, the Court would have applied the same analysis, and
likely precluded Defendants from using any of the late-disclosed materials. Thus, the Court
disagrees that Defendants’ actions preclude a finding that Plaintiff waived the doctrine of
equivalents. Both parties had an obligation to supplement their contentions in a timely manner,
and the failure to do so by either Plaintiff or Defendants is sanctionable.

16

. . to supply evidence on a motion, at a hearing, or at a trial, unless the failure was
substantially justified or is harmless.” Although Rule 37(c) specifically references a
party’s ability to use evidence at trial, it has been applied to bar a party from raising
certain theories of infringement in patent cases, because each new theory necessarily
requires new evidence or witnesses. See Tritek Techs., Inc. v. United States, 63 Fed.
Cl. 740, 749 (Fed. Cl. 2005); Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d
1364, 1374 (Fed. Cir. 2002) (noting that the result is the same regardless of whether
the district court held that a theory of infringement was waived or excluded an expert
report on that theory because, without the expert report, plaintiff had no evidence
supporting such theory). A district court has wide discretion to limit a party’s use of
evidence. See Eaton Corp. v. Appliance Valves Corp., 790 F.2d 874, 879 (Fed. Cir.
1986) (“The boundaries of the district court’s discretion are defined by unfair, prejudicial
harm to a party deprived of an adequate opportunity to present its case.”).
Pursuant to Rule 37(c), Plaintiff is not permitted to raise the doctrine of
equivalents unless it can show that the late disclosure was substantially justified or
harmless. Plaintiff makes no attempt to explain the late disclosure or otherwise show
how it was justified. In an attempt to show that the late disclosure was harmless,
Plaintiff contends that Defendants have failed to show that they suffered any prejudice.
(ECF No. 107 at 27.) Plaintiff points out that, on May 21, 2013, Defendants served Dr.
Slocum’s rebuttal expert report, which addresses Dr. Maynes’s opinions on doctrine of
equivalents. (ECF No. 108 ¶ 23.)
The Court disagrees that Plaintiff’s Rule 26(e) violation was harmless.
Defendants had no way of knowing whether the Court would find that Plaintiff had
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waived the right to assert the doctrine of equivalents, and were therefore properly
defending against that theory in the event the Court ruled against them. The fact that
Defendants were able to obtain an expert to provide a rebuttal opinion on the doctrine
of equivalents does not mean that they suffered no prejudice from the late
disclosure. Indeed, as Defendants argue, because Plaintiff did not disclose its intent to
pursue the doctrine of equivalents until the close of discovery, Defendants were denied
the ability to conduct any discovery on this alternative theory of infringement: they were
precluded from propounding any written discovery or to question Plaintiff’s witnesses on
the issue at their respective depositions.
The Court finds that Plaintiff has failed to show that its late disclosure of the
doctrine of equivalents theory was harmless, and it further finds that Defendants were
manifestly prejudiced by the tactical approach Plaintiff took with respect to its pursuit of
a claim under the subject doctrine. See Rambus, Inc. v. Infineon Tech. AG, 145 F.
Supp. 2d 721, 735 (E.D. Va. 2001) (“[T]he late interjection of the doctrine of equivalents
infringement analysis is not substantially justified within the meaning of Rule 37(c) and
the late presentation of that theory on the eve of trial is anything but harmless.”); Am.
Video Graphics, L.P. v. Elec. Arts, Inc., 359 F. Supp. 2d 558 (E.D. Tex. 2005) (“To the
extent defendants are given vague infringement contentions, they are hampered in their
ability to prepare their defense.”).
In sum, the Court finds that Plaintiff’s late disclosure of its intent to pursue the
doctrine of equivalents as an infringement theory violated Rule 26(e), and that the
appropriate sanction pursuant to Rule 37(c) is to find that Plaintiff has waived the ability
to pursue this theory. Accordingly, the Court finds that summary judgment in favor of
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Defendants is appropriate on Plaintiff’s patent infringement claim under the doctrine of
equivalents.
C.

Plaintiff’s Remaining Infringement Claims
The only independent infringement claims brought by Plaintiff are discussed

above. Because the Court has found no infringement on those claims, Plaintiff cannot
prevail on any of the remaining claims. See Wahpeton Canvas Co. v. Frontier, Inc.,
870 F.2d 1546, 1553 (Fed. Cir. 1989) (if an accused product does not infringe an
independent claim, it also does not infringe any claim depending thereon). Therefore,
the Court grants Defendants’ Motion for Summary Judgment on Plaintiff’s dependent
claims.
D.

Plaintiff’s Motion for Partial Summary Judgment
Plaintiff has separately filed a Motion for Partial Summary Judgment seeking

judgment in its favor on four issues: (1) that if the use of K-Cups in a Keurig Brewer
infringes on the ‘672 Patent, then Defendants induce and contribute to such
infringement; (2) that Plaintiff and its predecessors-in-interest have satisfied the
requirements of 35 U.S.C. § 287 since at least January 1, 2009; (3) that the asserted
claims of the ‘672 Patent are not invalid; and (4) that Claims 22 and 23 of the ‘672
Patent are not invalid. (ECF No. 136 at 1-2.)
The first two issues relate to sub-parts of Plaintiff’s affirmative claims for patent
infringement. As set forth above, the Court finds that Plaintiff has failed to show any
genuine dispute of fact as to whether the disputed K-Cups infringe on the ‘672 Patent.
As such, summary judgment in favor of Defendants is appropriate, and the Court need

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not address Plaintiff’s arguments for summary judgment in its favor.
The third and fourth issues in Plaintiff’s Motion are directed towards Defendants’
affirmative defense that the ‘672 Patent is invalid. Because the Court has found that
Plaintiff has failed to show that the K-Cups infringe of the ‘672 Patent, Plaintiff’s claims
have been defeated and Defendants’ affirmative defenses are moot.7 See PODS, Inc.
v. Porta Stor, Inc., 484 F.3d 1359, 1368 (Fed. Cir. 2007) (determining that the
affirmative defense of invalidity was moot in light of the finding of non-infringement).
Accordingly, Plaintiff’s Motion for Partial Summary Judgment is denied as moot.
IV. CONCLUSION
For the reasons set forth above, the Court ORDERS as follows:
1.

Defendants’ Motion for Summary Judgment (ECF No. 76) is GRANTED;

2.

Plaintiff’s Motion for Partial Summary Judgment (ECF No. 136) is DENIED; and

3.

The Clerk shall enter judgment in favor of Defendants on all claims. Defendants
shall have their costs.
Dated this 6th day of February, 2014.
BY THE COURT:

William J. Martínez
United States District Judge

7

Notably, Defendants have raised invalidity only as an affirmative defense in this case.
(See ECF No. 19 at 9.) Had Defendants asserted a counterclaim alleging that the ‘672 Patent
was invalid, a different standard would apply. See Liquid Dynamics Corp. v. Vaughan Co., Inc.,
355 F.3d 1361, 1370-71 (Fed. Cir. 2003) (“A district court judge faced with an invalidity
counterclaim challenging a patent that it concludes was not infringed may either hear the claim
or dismiss it without prejudice, subject to review only for abuse of discretion.”).

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