Siemens Industry, Inc. v. Westinghouse Air Brake Technologies Corporation et al

Filing 462

MEMORANDUM ORDER setting briefing schedule and a hearing on the ensnarement issue -- Hearing is set for 5/28/2019 at 12:00 PM in Courtroom 6B following argument on the post-trial motions. Signed by Judge Leonard P. Stark on 3/5/19. (ntl)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
SIEMENS MOBILITY INC.
Plaintiff,
C.A. No. 16-284-LPS

V.

WESTINGHOUSE AIR BRAKE
TECHNOLOGIES CORPORATION
(d/b/a WABTEC CORPORATION) and
WABTEC RAILWAY ELECTRONICS, INC.,
Defendants.

MEMORANDUM ORDER
At Wilmington this 5th day of March, 2019 :
Having reviewed the parties' joint status report (D.I. 461), IT IS HEREBY ORDERED
that:
1.

"A helpful first step in an ensnarement analysis is to construct a hypothetical

claim that literally covers the accused device." DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1324 (Fed. Cir. 2009). "Next, the district court must assess the prior art

introduced by the accused infringer and determine whether the patentee has carried its burden of
persuading the court that the hypothetical claim is patentable over the prior art." Id. at 1325.
Although optional, the Court finds that analysis of such a hypothetical claim would be helpful in
resolving Defendants' ensnarement defense. '

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As the Court has already held, Westinghouse properly preserved its ensnarement
contention. (See D.I. 459 at 2) It is not necessary for the issue to have been raised in a particular
type of motion. See G. David Jang, MD. v. Bos. Scientific Corp. , 872 F.3d 1275, 1288 (Fed.
Cir. 2017).

2.

No later than March 11, 2019, Siemens shall propose to Westinghouse a

hypothetical claim for each patent. See Jang, 872 F.3d at 1285; Ultra-Tex Surfaces, Inc. v. Hill
Bros. Chern. Co., 204 F.3d 1360, 1364 (Fed. Cir. 2000). Thereafter, the parties shall meet and
confer and, no later than March 15, 2019, file with the Court either (i) the parties ' agreed-to
hypothetical claims or (ii) each party' s proposals, without argument.
3.

Following identification of the hypothetical claims, the burden begins with the

accused infringer, which has the "burden of producing evidence of prior art to challenge a
hypothetical claim." Jang, 872 F.3d at 1285. Since " [t]he ensnarement inquiry ... has no
bearing on the validity of the actual claims," and ensnarement is a legal question for the Court
rather than the jury, DePuy, 567 F.3d at 1323, Westinghouse may rely on any prior art that was
produced in discovery in this case, even if it was not included in either the pretrial order or the
trial record. See Jang, 872 F.3d at 1288-89 (finding accused infringer is not barred from
pursuing ensnarement even though it did not pursue invalidity at trial, as invalidity and
ensnarement are "two different concepts"); id. at 1290 (finding "no reason" to preserve
ensnarement in pretrial order). Accordingly, no later than March 29, 2019, Westinghouse shall
serve on Siemens its prior art challenges to the hypothetical claims in the form of claim charts.
4.

As "the ultimate burden of persuasion rests on the patentee to show that the

hypothetical claim does not read on the prior art," Ultra-Tex, 204 F.3d at 1365, Siemens will be
provided the fust and last word in argument. Briefing shall be submitted as follows:
a.

Siemens' opening brief, not to exceed fifteen (15) pages, due April 12,

b.

Westinghouse' s answering brief, not to exceed fifteen (15) pages, due

2019.

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April 26, 2019.

c.
5.

Siemens' reply brief, not to exceed seven (7) pages, due May 3, 2019.

A hearing on the ensnarement issue will be held on May 28, 2019 at 12:00 p.m.

following argument on the post-trial motions. No later than May 10, 2019, the parties shall file a
joint letter informing the Court of their proposed format for the hearing.

HONORABLE LEONARD P. STARK
UNITED STATES DISTRICT JUDGE

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