Fleming v. Escort Inc. et al

Filing 150

MEMORANDUM DECISION AND ORDER granting in part and denying in part 126 Motion for Reconsideration. Signed by Judge B. Lynn Winmill. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by cjm)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
HOYT A. FLEMING,
Plaintiff,

Case No. CV 09-105-S-BLW

v.

MEMORANDUM DECISION
AND ORDER

ESCORT, INC. and BELTRONICS
USA, INC.,
Defendants.

INTRODUCTION
The Court has before it Escort’s motion for reconsideration. The motion is fully
briefed and at issue. For the reasons explained below, the Court will grant in part and
deny in part the motion.
LEGAL STANDARD
A motion to reconsider an interlocutory ruling requires an analysis of two
important principles: (1) error must be corrected; and (2) judicial efficiency demands
forward progress. The former principle has led courts to hold that a denial of a motion to
dismiss or for summary judgment may be reconsidered at any time before final judgment.
Preaseau v. Prudential Insurance Co., 591 F.2d 74, 79-80 (9th Cir. 1979). While even an
interlocutory decision becomes the “law of the case,” it is not necessarily carved in stone.
Justice Oliver Wendell Holmes concluded that the “law of the case” doctrine “merely
Memorandum Decision & Order - 1

expresses the practice of courts generally to refuse to reopen what has been decided, not a
limit to their power.” Messinger v. Anderson, 225 U.S. 436, 444 (1912). “The only
sensible thing for a trial court to do is to set itself right as soon as possible when
convinced that the law of the case is erroneous. There is no need to await reversal.” In re
Airport Car Rental Antitrust Litigation, 521 F.Supp. 568, 572 (N.D.Cal. 1981)
(Schwartzer, J.).
The need to be right, however, must be balanced with the need for forward
progress. A court’s opinions “are not intended as mere first drafts, subject to revision and
reconsideration at a litigant's pleasure.” Quaker Alloy Casting Co. v. Gulfco Indus., Inc.,
123 F.R.D. 282, 288 (N.D.Ill.1988). “Courts have distilled various grounds for
reconsideration of prior rulings into three major grounds for justifying reconsideration:
(1) an intervening change in controlling law; (2) the availability of new evidence or an
expanded factual record; and (3) need to correct a clear error or to prevent manifest
injustice.” Louen v Twedt, 2007 WL 915226 (E.D.Cal. March 26, 2007). If the motion
to reconsider does not fall within one of these three categories, it must be denied.
ANALYSIS
Escort argues that its motion to reconsider falls within the third category because
the Court committed a clear error in its decision striking as late-filed some 255 patent
invalidity contentions from the report of Escort’s expert, Dr. Grindon. Escort argues that
certain items stricken by the Court were actually contained in its timely-filed Patent
Invalidity Contentions. More specifically, Escort lists 38 computer files that it claims
Memorandum Decision & Order - 2

were listed in a description of a prior art reference known as “Orr’s Prior Invention.”
The Court’s earlier decision dealt with many issues, and the particular issues raised
here by Escort regarding the 38 computer files were not raised in this level of detail by
Escort’s briefing, and hence were not addressed in the prior decision. The Court will now
turn to a specific examination of the 38 computer files at issue in this motion to
reconsider.
In Escort’s Invalidity Contentions, Escort identified as prior art the invention of
Steven Orr, and referred to it as “Orr’s Prior Invention.” Orr connected his laptop
computer to his radar detector, and used a computer program to collect and store false
positive warnings from the radar detector as he drove around to various locations. In the
Invalidity Contentions, Escort claimed that “Orr’s Prior Invention” “teaches a method for
collecting field data from a radar detector, so that data could be stored from each radar
encounter of the detector . . . .” Escort attached to its Invalidity Contentions the
Declaration of Orr, who stated that prior to Fleming’s invention, he (Orr) had “created a
family of tools” that consisted in part of various computer files that would run on his
laptop computer to collect data from his radar detector as he drove around in various
areas. Escort claims that these computer files – dated prior to Fleming’s invention – show
that Orr’s invention was prior in time to Fleming’s.
Orr attached to his declaration a list of those computer files that he claims
demonstrate that his invention constitutes prior art. Escort attached this list – along with
Orr’s declaration – to its Invalidity Contentions. Escort’s expert, Dr. Grindon, relies on
Memorandum Decision & Order - 3

those computer files in rendering his opinions that “Orr’s Prior Invention” constitutes
prior art.
In its motion to reconsider, Escort claims that the Court’s earlier decision striking
255 prior art references by Dr. Grindon, not contained in Escort’s Invalidity Contentions,
cannot apply to the 38 computer files listed by Escort in its motion to reconsider and
relied upon by Dr. Grindon, because those 38 files were identified in the Invalidity
Contentions. Those 38 computer files are as follows:
CLIFCMI.XLS
CLIFTON.XLS
CMICIN.XLS
F1.ZIP
F2.ZIP
F3.ZIP
F4.ZIP
F5.ZIP
F6.ZIP
F7.ZIP
F8.ZIP
F9.ZIP
F10.ZIP
HOME.XLS
PICNIC.XLS
RAIN.XLS
ROAD.ZIP
TOWRK.425.XLS
TWOROUTE.XLS
WORK.XLS
BAS.ZIP
RDWIDE.bas
tst4600k.bas
Graph2.bas
Road22.bas
Road23.bas
Road24.bas
Memorandum Decision & Order - 4

Road24a.bas
F1x.dat through F10x.dat
See Escort Brief (Dkt. 126) at p. 3. Escort represents that “[e]ach of the computer files
listed above, and relied upon by Dr. Grindon in his expert report, appear in the list of
computer files included in Escort’s Invalidity Contentions.” Id.
In fact, however, 17 of the computer files listed above cannot be found under those
names in the list attached to Orr’s Declaration: (1) RDWIDE.bas; (2) tst4600k; (3)
Graph2.bas; (4) Road22.bas; (5) Road23.bas; (6) Road24.bas; (7) Road24a.bas; and
(8-17) F1x.dat through F10x.dat. While these 17 files were not called out by name in
Orr’s Declaration or list, there were hints in his Declaration that they existed. For
example, Orr states in his Declaration (that accompanied the Invalidity Contentions) that
“[e]mbedded within each ZIP file [referring to F1.ZIP through F10.ZIP] is a number of
data files with a .DAT extension, each containing radar spectral information collected
from radar encounters . . . .” See Orr Declaration at ¶ 6, p. 2. That gave some notice to
Fleming that the ZIP files, named in Orr’s list, contained embedded files with a .dat
extension that contained radar spectral information collected by Orr.
Similarly, Orr’s Declaration hints that more important files might be found within
listed files BAS.ZIP, ROAD.ZIP, and MAKE.ZIP. These three files, Orr stated in his
Declaration, “contain compressed versions of BASIC programs that I used in collection
of field data from a radar detector.” See Orr Declaration at ¶ 5, p. 2. That gives some
notice to Fleming that these three ZIP files may contain embedded files with a .bas

Memorandum Decision & Order - 5

extension.
In fact, we find out now – from a Declaration of Orr signed May 2, 2011 – that
indeed there were files critical to the prior art analysis of Dr. Grindon embedded within
the files listed by Orr, and learn for the first time the names of those files. For example,
files Road22. bas, Road23.bas, Road24.bas, Road 24a.bas, and RDWIDE.bas were
embedded in the BAS.ZIP file, and files F1x.dat through F10x.dat were embedded in
F1.ZIP through F10.ZIP. See Declaration of Orr (Dkt. 126-4) at p. 4.1 Dr. Grindon relies
on all of these embedded files in rendering his opinion that Orr’s Prior Invention
constitutes prior art.
As the Court previously held, Local Patent Rule 3.3 requires that Invalidity
Contentions contain “a chart identifying where specifically in each alleged item of prior
art each limitation of each asserted claim is found . . . .” The chart Escort prepared for its
Invalidity Contentions did not contain any mention of the 17 files listed above. While the
17 files are embedded in files that were identified in Orr’s original list, that fact was not
disclosed in Escort’s Invalidity Contentions and was merely hinted at in the attached
Declaration of Orr. There was no way Fleming could read Escort’s Invalidity
Contentions and (1) understand that Escort was claiming the 17 computer files as prior art

1

Similarly, Orr explains that (1) tst4600k.bas is a file that is the combination of
Road24.bas and RDWIDE.bas, both of which (as explained above) were embedded in
BAS.ZIP, a file named in Orr’s original list, and (2) Graph2.bas. “is a slightly modified
version of file tst4600k.bas that is comprised of approximately 95% of file tst.4600k.bas.”
Id. These files are part of the 17 files evaluated above and subject to the same analysis.
Memorandum Decision & Order - 6

and (2) understand how each of the 17 computer files related to each limitation of each
claim of Fleming’s patents.
Escort argues, however, that it provided the computer files and their source code to
Fleming by making them available for inspection during discovery. But this Court has
already rejected that argument in its prior decision:
[K]nowing about a reference is much different than knowing that your opponent will
claim the reference as prior art. The whole point behind the strict detail required of
invalidity contentions in Local Rule 3.3, discussed above, is to require defendants
to gather and identify prior art early-on so that plaintiffs will have a fair chance of
rebuttal. That Rule makes it obvious to defendants like Escort that they cannot rely
on a plaintiff’s mere knowledge of a reference.

See Memorandum Decision (Dkt. 117) at p. 6. Accordingly, the Court denies the motion
to reconsider as to the 17 computer files: (1) RDWIDE.bas; (2) tst4600k; (3) Graph2.bas;
(4) Road22.bas; (5) Road23.bas; (6) Road24.bas; (7) Road24a.bas; and (8-17) F1x.dat
through F10x.dat.
With regard to the remaining 21 computer files, Escort correctly notes that they
were identified in Orr’s original list, attached to his Declaration that was in turn attached
to Escort’s Patent Invalidity Contentions. Some of those 21 files are referenced in the
detailed chart accompanying Escort’s Invalidity Contentions in compliance with Local
Patent Rule 3.3. For example, certain portions of that chart refer to paragraph 12 of Orr’s
Declaration that discusses Orr’s creation and use of Excel computer files that are
identified on his attached list as those files ending with the extension .XLS. There are 9
such files: CLIFCMI.XLS; CLIFTON.XLS; CMICIN.XLS; HOME.XLS; PICNIC.XLS;

Memorandum Decision & Order - 7

RAIN.XLS; TOWRK.425.XLS; TWOROUTE.XLS; and WORK.XLS. Because these
files were referenced in Escort’s Invalidity Contentions as required by Local Rule 3.3, the
Court finds that they are not subject to the Court’s earlier decision to strike the 255
references.
That leaves 12 remaining files: F1.ZIP through F10.ZIP; ROAD.ZIP; and
BAS.ZIP. Unlike the Excel computer files discussed above, these computer files were
not referenced in Escort’s chart accompanying its Invalidity Contentions. Fleming had no
way of knowing how these 12 files related in any way to the limitations and claims of the
patents in dispute until Dr. Grindon filed his expert report. That is precisely what Local
Patent Rule 3.3 seeks to avoid. Accordingly, the Court will deny the motion to reconsider
as to these 12 computer files: F1.ZIP through F10.ZIP; ROAD.ZIP; and BAS.ZIP.
ORDER
In accordance with the Memorandum Decision set forth above,
NOW THEREFORE IT IS HEREBY ORDERED, that Escort’s motion to
reconsider (docket no. 126) is GRANTED IN PART AND DENIED IN PART. It is
granted to the extent it seeks to allow Dr. Grindon to rely on the following computer files
in rendering his opinion on prior art: CLIFCMI.XLS; CLIFTON.XLS; CMICIN.XLS;
HOME.XLS; PICNIC.XLS; RAIN.XLS; TOWRK.425.XLS; TWOROUTE.XLS; and
WORK.XLS. It is denied to the extent it seeks to allow Dr. Grindon to rely on the
following computer files in rendering his opinion on prior art: F1.ZIP through F10.ZIP;
ROAD.ZIP; BAS.ZIP; RDWIDE.bas; tst4600k; Graph2.bas; Road22.bas; Road23.bas;
Memorandum Decision & Order - 8

Road24.bas; Road24a.bas; and F1x.dat through F10x.dat.

DATED: June 2, 2011

B. LYNN WINMILL
Chief Judge
United States District Court

Memorandum Decision & Order - 9