Dyson, Inc. et al v. Euro-Pro Operating LLC et al

Filing 266

MEMORANDUM Opinion and Order Signed by the Honorable John W. Darrah on September 9, 2016. Mailed notice(mr, )

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
DYSON, INC. and
DYSON TECHNOLOGY LIMITED,
Plaintiffs,
v.
SHARKNINJA OPERATING LLC and
SHARKNINJA SALES COMPANY,
Defendants.

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Case No. 14-cv-779
Judge John W. Darrah

MEMORANDUM OPINION AND ORDER
Plaintiffs Dyson, Inc. and Dyson Technology Limited filed a Second Amended
Complaint against Defendants SharkNinja Operating LLC and SharkNinja Sales Company
(collectively, the “Defendants”), alleging three counts of design infringement associated with
United States Design Patents No. D577,163 (the “‘163 Patent”), No. D668,010 (the “‘010
Patent”), and No. 668,823 (the “‘823 Patent”). On March 2, 2016, the Court held a claimsconstruction hearing, which included the argument of counsel for each party and the submissions
of written summations by each party. Plaintiffs have filed a Motion to Strike Portions of
Defendants’ Reply Claim Construction Brief, Portions of the Rebuttal of Declaration of
Alan Ball, and Proposed Claim Constructions in the Joint Rule 4.2(F) Statement [157]. For the
reasons stated below, Plaintiffs’ Motion [157] is denied.
BACKGROUND
On December 23, 2014, Defendants disclosed their final non-infringement contentions.
On September 2, 2015, Defendants’ Motion for Summary Judgment of Noninfringement was
denied. After the summary judgment ruling, the Court agreed with Defendants that a claim

construction hearing was necessary to distinguish between ornamental and functional aspects of
the design patents. The parties submitted claim construction briefs and a claim construction
hearing was held on March 2, 2016.
LEGAL STANDARD
Arguments raised for the first time in a reply brief are waived. United States v. Kennedy,
726 F.3d 968, 974 n. 4 (7th Cir. 2013) (citing Broaddus v. Shields, 665 F.3d 846, 854 (7th Cir.
2011)). However, a reply may respond to issues and arguments raised in a response brief. See
Central States, Southeast and Southwest Areas Pension Fund v. White, 258 F.3d 636, 640 n. 2
(7th Cir. 2001).
ANALYSIS
Plaintiffs allege that Defendants’ proposed claim constructions in the Local Patent Rule
4.2(f) Statement are derived from arguments and constructions raised for the first time in
Alan Ball’s rebuttal declaration and Defendants’ Reply Claim Construction Brief. Plaintiffs
argue that the verbal descriptions of the design and an argument about excluding elements “at a
general conceptual level” are new and cannot be made for the first time in replies. Defendants
argue that the portions that Plaintiffs object to were responses to mischaracterizations of their
arguments in Plaintiffs’ Responsive Claim Construction Brief. 1
In their initial brief and Local Patent Rule 4.1 proposal, Defendants argued that the
claims should be limited to the drawings and further limited by functional elements. In their
reply brief and their proposed claim constructions in the Joint Rule 4.2(f) Statement, Defendants
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Most of the arguments in the briefs for the Motion to Strike are substantive arguments
about claim construction and not whether Defendants improperly raised new issues and
arguments. For example, Plaintiffs argue that Defendants’ verbal constructions are overly
argumentative and self-serving, and Defendants argue that functional elements should be
excluded at a general conceptual level.
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added verbal descriptions and pictures of what they believed the functional elements to be. The
arguments and constructions are not raised for the first time in the Reply Claim Construction
Brief, Rebuttal of Declaration of Alan Ball, and Proposed Claim Constructions in the Joint Rule
4.2(f) Statement. Rather, they are clarifications of the previous arguments and constructions in
response to arguments raised by Plaintiffs in their Responsive Claim Construction Brief. 2
Additionally, Plaintiffs were given leave to file a Sur-Reply Claim Construction Brief, which
addresses the allegedly new arguments and contentions.
CONCLUSION
For the reasons discussed above, Plaintiffs’ Motion to Strike Portions of Defendants’
Reply Claim Construction Brief, Portions of the Rebuttal of Declaration of Alan Ball, and
Proposed Claim Constructions in the Joint Rule 4.2(F) Statement [157] is denied. However, the
substance of the Motion will be considered in the claim construction ruling.

Date:

September 9, 2016

/s/
John W. Darrah
U.S. District Court Judge

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It should also be noted that “[b]ecause the court has an independent obligation to
construe the terms of a patent, [it] need not accept the constructions proposed by either party . . .
.” Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1323-24 (Fed. Cir. 2008).
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