Wyers Products Group v. Cequent Performance Products, Inc.

Filing 241

ORDER granting in part and denying in part 219 Motion In Limine To Exclude Invalidity Defenses at Trial and 223 Motion for Clarification and Reconsideration of Order Construing Patent Claim Terms & Resolving Motions for Summary Judgment by Ju dge Robert E. Blackburn on 6/1/15. When judgment enters in Civil Action No. 12-cv-02640-REB-KMT, judgment shall enter in favor of Cequent Performance Products, Inc. and Cequent Consumer Products, Inc. and against Wyers Products Group, Inc. and Philip W. Wyers. (dkals, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Robert E. Blackburn
Civil Action No. 12-CV-02640-REB-KMT
(consolidated with Civil Action No. 13-CV-02976-REB-KMT)
WYERS PRODUCTS GROUP, INC., a Colorado corporation, and
PHILIP W. WYERS,
Plaintiffs,
vs.
CEQUENT PERFORMANCE PRODUCTS, INC., and
CEQUENT CONSUMER PRODUCTS, INC.,
Defendant.

ORDER
Blackburn, J.
This matter is before me on the following: (1) Wyers Products Group, Inc. and
Philip Wyers’ Motion for Clarification and Reconsideration of Order Construing
Patent Claim Terms & Resolving Motions for Summary Judgment [#206] [#222]1
filed May 11, 2015; and (2) Cequent’s Motion In Limine To Exclude Invalidity
Defenses at Trial [#219] filed May 8, 2015. The parties filed responses [#230 & #233]
to each motion. I grant the motion in limine in part and deny it in part. I grant the
motion to reconsider in part and deny it in part.
This consolidated case concerns patent infringement claims asserted by Wyers
Products Group, Inc. and Philip W. Wyers (collectively Wyers) and Cequent

1

“[#222]” 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.

Performance Products, Inc. and Cequent Consumer Products, Inc. (collectively
Cequent). At this point, only the claims asserted by Cequent in Civil Action No. 13-CV02976-REB-KMT and the counterclaims of Wyers, asserted in its answer [#112] are at
issue. All other claims have been resolved.
I. MOTION IN LIMINE
In its motion in limine [#219], Cequent seeks an order precluding Wyers from
presenting at trial a prior inventorship defense under § 102(g)(2) and an obviousness
defense under § 103. Cequent contends Wyers has not preserved these two defenses
and should be barred from asserting these defenses at trial.
A. § 102(g)(2) Invalidity Defense - Prior Inventorship
As applicable in this case, 35 U.S.C. § 102 provides nine distinct defenses to a
patent infringement claim. The relevant provisions of 35 U.S.C. § 102 were reorganized
when certain aspects of the Leahy-Smith America Invents Act (AIA), Pub. L. No.
112-29, took effect on March 16, 2013. This case was filed before that date. The
pre-AIA version of § 102 is applicable in this case, and, generally, the parties rely on the
pre-AIA version of § 102.
At trial, Wyers seeks to present a defense that the Cequent ‘686 patent is invalid
because Wyers is a prior inventor under the terms of § 102(g)(2) (pre-AIA version).
Cequent moves to have Wyers barred from presenting this defense because Wyers has
not preserved a § 102(g)(2) defense. On joint motion [#98] of the parties, the court set
patent disclosure deadlines for the Cequent ‘686 patent. Minute Order [#124] filed
February 20, 2014. Wyers had until February 4, 2014, to disclose its validity
contentions concerning the ‘686 patent. Id. The Wyers invalidity contentions are
attached to the motion in limine as [#219-1]. In its invalidity contentions, Wyers asserts
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that “the ‘686 patent is invalid precisely because Wyers conceived and filed for the
invention contained in the ‘686 patent well before Cequent, giving [Wyers] priority over
the invention and invalidating the ‘686 patent.” Invalidity contentions [#219-1], p. 2.
Wyers asserts that the ‘686 patent is invalid under “35 U.S.C. §§ 102, 103 and 112.” Id.
Wyers then specifies that the ‘686 patent is invalid “as anticipated by the ‘121 patent
under Section 102(a)(2).” Id. Of the nine defenses available under the pre-AIA version
of § 102, § 102(a)(2) is the only defense specified by Wyers in its invalidity contentions.
Wyers asserts also invalidity contentions of obviousness under § 103 and
indefiniteness. Id., pp, 2 - 3.
Section 102(a)(2), the section specified in the invalidity contentions of Wyers, is
part of the post-AIA version of § 102, which took effect on March 16, 2013, and is not
applicable to this case. Thus, a § 102(a)(2) defense may not be presented by Wyers in
this case. Notably, a § 102(a)(2) defense is a prior filing defense similar to the prior
filing defense under § 102(e)(2) of the pre-AIA version of § 102. I have granted
summary judgment in favor of Cequent on the § 102(e)(2) prior filing defense of Wyers.
Order [#206].
Section 102(g)(2) is not cited or otherwise specified anywhere in the invalidity
contentions of Wyers and was not raised in the motion for summary judgment of Wyers.
Because Wyers did not timely disclose and assert a § 102(g)(2) defense, Cequent
contends, Wyers has waived that defense and may not present it at trial. I agree.
A requirement that parties to a patent case disclose infringement, noninfringement, and invalidity contentions is intended to require the parties to provide
“early notice of their infringement and invalidity contentions, and to proceed with
diligence in amending those contentions when new information comes to light in the
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course of discovery. The rules thus seek to balance the right to develop new
information in discovery with the need for certainty as to the legal theories.” O2 Micro
Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1366 (Fed Cir. 2006)
(addressing effect of district court local rules applicable to patent cases). “If the parties
were not required to amend their contentions promptly after discovering new
information, the contentions requirement would be virtually meaningless as a
mechanism for shaping the conduct of discovery and trial preparation.” Id. A
requirement that the parties disclose their infringement contentions, non-infringement
contentions, and invalidity contentions ensures that the parties “crystalize their theories
of the case early in the litigation so as to prevent the shifting sands approach to claim
construction” and to trial of the claims and defenses. See id. at 1364.
Wyers claims it adequately disclosed a § 102(g)(2) defense in its answer [#112],
its invalidity contentions [#219-1], and its Markman brief [#122]. Section 102(g)(2) is
not specified anywhere in the portions of those documents cited by Wyers. A global
citation to § 102, which contains nine, separate, invalidity defenses, is not sufficient to
preserve all of those defenses. Rather, a party who wishes to rely on one or more of
those nine defenses must specify which of those nine defenses it asserts. A lesser
requirement does not require the parties to crystalize and disclose their theories of the
case and would permit a party to specify one or more of the nine defenses after
discovery is complete and on the eve of trial. Such an approach would leave discovery
and trial preparation unfocused and inefficient, would prohibit resolution of specific §
102 defenses on summary judgment, and would not provide an opposing party
reasonable notice of the specific defense or defenses asserted.
In essence, Wyers did not give Cequent timely notice that Wyers would pursue a
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defense of invalidity under § 102(g)(2). Wyers did not raise this defense specifically
until long after its invalidity contentions had been disclosed, discovery was complete,
the motions for summary judgment were resolved, and the case was near to trial.
Whether Wyers acted intentionally or through neglect in failing to timely specify a §
102(g)(2) defense, the effect is the same. “Waiver is accomplished by intent, but
forfeiture comes about through neglect.” Richison v. Ernest Group, Inc., 634 F.3d
1123, 1128 (10th Cir. 2011) (internal quotation and citations omitted). Wyers has either
waived or forfeited a § 102(g)(2) invalidity defense and Wyers may not present such a
defense to the infringement claims of Cequent concerning the ‘686 patent.
B. § 103 Invalidity Defense - Obviousness
Cequent contends Wyers should not be permitted to “resuscitate an obviousness
defense it abandoned during discovery by not offering expert opinion on it.” Motion
[#219], p. 1. In resolving the § 102(e)(2) invalidity defense of Wyers on summary
judgment, I concluded that the patent application of Wyers, which led to the ‘121 patent
of Wyers, is not prior art which invalidates the ‘686 patent under § 102(e)(2). Order
[#206], pp. 22 - 23. In its invalidity contentions, Wyers identifies other prior art in
support of its invalidity contentions. Invalidity contentions [#219-1], pp. 2 - 7. Cequent
contends Wyers should not be permitted to present an obviousness defense based on
this other prior art because Mr. Wyers did not address this other prior art in his expert
reports. The reports of Mr. Wyers are the only expert reports on which Wyers relies to
establish invalidity.
Cequent seeks to bar Wyers from presenting an obviousness defense at trial
because Wyers does not have adequate expert testimony to support this defense.
Cequent seeks to limit the expert testimony of Mr. Wyers to opinions contained in the
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disclosed expert reports of Mr. Wyers and argues those opinions are not sufficient to
support the obviousness defense. In response, Wyers contends expert opinion is not
necessary to support his obviousness defense.
Precluding Wyers from presenting an obviousness defense because of lack of
sufficient evidence would be, in essence, a grant of summary judgment on this issue.
On the extant record, I conclude that Wyers has preserved and pursued its obviousness
defense. On the eve of trial, I will not assess the sufficiency of the evidence in support
of that defense. These issues could and should have been raised on summary
judgment; however, Cequent addressed these issues only in passing in its motion for
summary judgment. Cequent motion for summary judgment [#158], pp. 19 - 20. Thus,
the sufficiency of the evidence to support the obviousness defense of Wyers must and
will be assessed at trial.
C. Independent Relevance of Invalidity Defenses
& Admissibility of Expert Opinion
Wyers argues also that evidence of the invalidity defenses of Wyers is relevant to
its laches, equitable estoppel, and non-willfulness defenses. In addition, Wyers
contends its prior inventorship evidence, evidence in support of a § 102(g)(2) defense,
is relevant to the calculation of a reasonable royalty, which is probative of damages.
Thus, Wyers opposes the motion in limine.
These issues of relevance are evidence-driven and cannot be resolved with
confidence until evidence is presented at trial.2 Conceivably, evidence of one or more
invalidity defenses may be relevant as posited by Wyers, even when the defense may
not be asserted in response to the infringement claims of Cequent. Obviously, no trial
2

Thus, I specifically discourage the filing of such motions in my Practice Standards. See REB
Civ. Practice Standard IV.E.1.

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evidence has been presented, and the manner and context in which this evidence may
be brought forward remains uncertain. The relevance of the evidence in question, its
potential to cause unfair prejudice or confusion, to mislead the jury, or to waste time all
are matters that cannot be determined until the evidentiary landscape becomes clear at
trial. Similarly, whether Wyers will offer undisclosed expert opinion testimony at trial
also is an issue that cannot be determined until the evidentiary landscape becomes
clear at trial. Therefore, I decline to rule on these issues in advance of trial.
II. MOTION TO RECONSIDER
The bases for granting reconsideration are extremely 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
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).
On March 30, 2015, the court issued its Order Construing Disputed Patent
Claim Terms & Resolving Motions for Summary Judgment [#206]. In that order
[#206], I addressed cross motions for summary judgment filed by Wyers and Cequent.
The invalidity defenses at issue in the motion to reconsider [#222] are invalidity
defenses Wyers claims it has asserted in response to the patent infringement claims
made by Cequent, as plaintiff, against Wyers, as defendant. These infringement claims
concern the ‘686 patent of Cequent.
In its motion for summary judgment [#163], Wyers sought summary judgment of
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invalidity concerning the Cequent ‘686 patent on two bases. First, Wyers argued the
‘686 patent is invalid under 35 U.S.C. § 102(e)(2) because the provisional patent
application of Wyers, which led to the ‘121 patent of Wyers, is prior art as to the ‘686
patent of Cequent. In addition, Wyers asserted, the ‘121 patent of Wyers anticipates
the claims of the ‘686 patent of Cequent. Motion [#163], pp. 5 - 8. Second, Wyers
argued interference under 35 U.S.C. § 291. Motion [#163], pp. 8 - 9. In its motion for
summary judgment, Cequent sought summary judgment on the anticipation defense of
Wyers under § 102(e)(2) and the interference defense under § 291. Cequent motion for
summary judgment [#158], pp. 18 - 20. In my order [#206] resolving these motions, I
ordered that “when judgment enters in Civil Action No. 12-cv-02640-REB-KMT,
judgment shall enter in favor of the defendants [Cequent] on the claim of the plaintiffs
[Wyers] that the ‘686 patent of the defendants [Cequent] is invalid.” Order, p. 25, ¶ 4.
A. § 102(g)(2) Invalidity Defense - Prior Inventorship
In its present motion, Wyers contends the court misapprehended
the scope, evidence and legal support for Wyers’ prior inventorship
defense and counterclaim. While the Court addressed 35 U.S.C. § 102(e)
in its order, the Court did not address 35 U.S.C. § 102(g)(2), Alexander
Milburn or Wyers’ undisputed evidence establishing that he invented the
unattended coupler lock before Cequent.
Motion to reconsider [#222], p. 3.3 Wyers notes in its present motion the significant
distinctions between an invalidity defense under § 102(e) and an invalidity defense
under § 102(g)(2). Motion to reconsider [#222], pp. 5 - 6. Wyers then argues that it has
a viable invalidity defense under 102(g)(2) which was not addressed in my summary
judgment order, remains unresolved, and may be argued at trial.
3

As noted previously, the relevant provisions of 35 U.S.C. § 102 were reorganized when certain
aspects of the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, took effect on March 16, 2013.
This case was filed before that date. Thus, the parties and the court refer to the pre-AIA version of § 102.

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As discussed and resolved above, Wyers has waived or forfeited a defense
under § 102(g)(2). Thus, there is no basis on which to reconsider my summary
judgment order [#206] to preserve a § 102(g)(2) defense for Wyers.
B. § 103 Invalidity Defense - Obviousness
In its motion for summary judgment [#158], Cequent addressed very briefly the
obviousness defense of Wyers. Cequent motion for summary judgment [#158], pp. 19 20. Wyers asserts this defense against the patent infringement claims of Cequent
based on the ‘686 patent of Cequent. Wyers raised the obviousness defense only
obliquely in its motion for summary judgment of invalidity concerning the ‘686 patent.
Wyers motion for summary judgment [#163], p. 9. Accordingly, in my summary
judgment order [#206], I did not address the § 103 obviousness defense. In its motion
to reconsider [#222], Wyers asks that I reconsider my order [#206] granting summary
judgment in favor of Cequent on all of the invalidity defenses asserted by Wyers. Wyers
asks that my order [#206] be reconsidered so that order does not bar presentation of its
obviousness defense at trial.
My order [#206] addressing the motions for summary judgment addressed
specifically two invalidity defenses asserted by Wyers concerning the infringement
claims of Cequent based on the Cequent ‘686 patent. Those defenses are prior art and
anticipation under 35 U.S.C. § 102(e)(2) and interference under 35 U.S.C. § 291. The §
103 obviousness defense was not addressed and resolved in my order. However, in
the conclusion of my order [#206], I ordered that “when judgment enters in Civil Action
No. 12-cv-02640-REB-KMT, judgment shall enter in favor of the defendants [Cequent]
on the claim of the plaintiffs [Wyers] that the ‘686 patent of the defendants [Cequent] is
invalid.” Order Construing Disputed Patent Claim Terms & Resolving Motions for
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Summary Judgment [#206] filed March 30, 2015, p. 25, ¶ 4. In retrospect, I conclude
that this language is too broad because it effectively grants summary judgment in favor
of Cequent on the § 103 obviousness defense of Wyers, a defense which remains
viable.
Given these circumstances, I conclude that my order [#206] directing the entry of
judgment in favor of Cequent on the claim of Wyers that the ‘686 patent is invalid is too
broad. That order should be limited to the two invalidity defenses explicitly addressed in
the summary judgment briefing and resolved in my order [#206], prior art and
anticipation under 35 U.S.C. § 102(e)(2) and interference under 35 U.S.C. § 291. An
order which resolves other invalidity defenses constitutes clear error because such an
overly-broad order would preclude the assertion by Wyers of any viable invalidity
defense not resolved on summary judgment. To that extent, I grant the motion to
reconsider.
III. CONCLUSION & ORDERS
Because Wyers has waived or forfeited its invalidity defense under 35 U.S.C. §
102(g)(2), Wyers shall be precluded from presenting at trial evidence in support of this
defense. To that extent, the motion in limine [#219] of Cequent is granted. Otherwise,
the motion in limine is denied.
In my order [#206] resolving the motions for summary judgment, I addressed and
resolved the motions for summary judgment as to two invalidity defenses asserted by
Wyers, prior art and anticipation under 35 U.S.C. § 102(e)(2) and interference under 35
U.S.C. § 291. However, in granting summary judgment, I ordered the entry of summary
judgment in favor of Cequent “on the claim of the plaintiffs that the ‘686 patent of the
defendants is invalid.” Order Construing Disputed Patent Claim Terms & Resolving
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Motions for Summary Judgment [#206] filed March 30, 2015, p. 25, ¶ 4. That portion of
my order [#206] was entered in error because it improperly includes the § 103 invalidity
defense of obviousness asserted by Wyers, a defense not addressed or resolved in my
order [#206]. Thus, I grant the motion to reconsider in part to make clarify my order
granting summary judgment as to invalidity defenses. Otherwise, the motion to
reconsider is denied.
THEREFORE, IT IS ORDERED as follows:
1. That Cequent’s Motion In Limine To Exclude Invalidity Defenses at Trial
[#219] filed May 8, 2015, is granted to the extent that Wyers shall be precluded from
presenting at trial evidence in support of an invalidity defense under 35 U.S.C. §
102(g)(2);
2. That otherwise, Cequent’s Motion In Limine To Exclude Invalidity
Defenses at Trial [#219] filed May 8, 2015, is denied;
3. That Wyers Products Group, Inc. and Philip Wyers’ Motion for
Clarification and Reconsideration of Order Construing Patent Claim Terms &
Resolving Motions for Summary Judgment [#206] [#222] filed May 11, 2015, is
granted in part;
4. That the language in paragraph number four (4) on page 25 of the Order
Construing Disputed Patent Claim Terms & Resolving Motions for Summary
Judgment [#206] filed March 30, 2015, is supplanted and superseded by the following
language:
That when judgment enters in Civil Action No. 12-cv-02640-REB-KMT,
judgment shall enter in favor of Cequent Performance Products, Inc. and
Cequent Consumer Products, Inc. and against Wyers Products Group,
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Inc. and Philip W. Wyers on the invalidity defense of Wyers asserting prior
art and anticipation under 35 U.S.C. § 102(e)(2) and in the invalidity
defense of Wyers asserting interference under 35 U.S.C. § 291;
5. That otherwise, Wyers Products Group, Inc. and Philip Wyers’ Motion for
Clarification and Reconsideration of Order Construing Patent Claim Terms &
Resolving Motions for Summary Judgment [#206] [#222] filed May 11, 2015, is
denied.
Dated June 1, 2015, at Denver, Colorado.
BY THE COURT:

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