No Spill Inc. v. Scepter Corporation et al

Filing 207

MEMORANDUM AND ORDER finding as moot 130 Motion to Compel; finding as moot 156 Motion for Order to Stay; denying 159 Motion to Strike; denying 159 Motion for Attorney Fees. Signed by Magistrate Judge Kenneth G. Gale on 1/8/21. (df)

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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
NO SPILL, INC.,

)
)
Plaintiff,
)
)
vs.
)
)
SCEPTER CANADA, INC., et al., )
)
Defendants. )
)

Case No. 18-2681-HLT-KGG

MEMORANDUM & ORDER DENYING
MOTION TO COMPEL, MOTION TO STAY AND MOTION TO STRIKE
Now before the Court is Defendants’ Motion to Compel supplemental
infringement contentions (Doc. 130), Motion to Stay Consideration of Motion to
Compel (Doc. 156), and Motion to Strike Plaintiff’s Amended Infringement
Contentions (Doc. 159). As discussed herein, the Court finds the proper setting in
which to address the issues relating to Plaintiff’s infringement contentions is
Defendants’ Motion to Strike (Doc. 159). As such, the Court DENIES as moot
Defendants’ Motion to Compel (Doc. 130) and Motion to Stay (Doc. 156). The
Court also DENIES Defendants’ Motion to Strike (Doc. 159).
BACKGROUND

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Plaintiff has brought claims against Defendants for patent infringement,
breach of contract, and trade dress infringement under the Lanham Act and Kansas
law. The facts and background of this case were summarized by the District Court
in its Memorandum & Order (Doc. 71, at 2-10) granting in part and denying in part
the Motion to Dismiss (Doc. 51) filed by Defendant Scepter Manufacturing and
joined by Defendant Scepter Canada. Broadly, the patent dispute centers on a
safety device in the parties’ manufactured gasoline containers designed to reduce
the risk of fire in the container.
The present motions filed by Defendants relate to Plaintiff’s infringement
contentions. The deadline for Plaintiff to disclose its asserted claims and
infringement contentions was May 19, 2020. (Doc. 98, at 2.) Pursuant to D. Kan.
Pat. Rule 3.1, which governs infringement contentions, “[n]ot later than 21 days
after the Rule 16 Scheduling Conference, a party claiming patent
infringement must serve on all parties a ‘Disclosure of Asserted Claims and
Infringement Contentions.’” The Rule continues that the disclosure must contain
“[e]ach claim of each patent in suit that is allegedly infringed by each opposing
party … .” Id., at subsection (a). Further,
[s]eparately for each asserted claim, each accused
apparatus, product, device, process, method, act, or other
instrumentality (“Accused Instrumentality”) of each
opposing party of which the party is aware. This
identification must be as specific as possible. Each
product, device, and apparatus must be identified by
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name or model number, if known. Each method or
process must be identified by name, if known, or by any
product, device, or apparatus which, when used,
allegedly results in the practice of the claimed method or
process[.]
Id., at subsection (b). Rule 3.1 continues that the contentions are required to
include a “chart identifying specifically where each limitation of each asserted
claim is found within the Accused Instrumentality.” Id., at subsection (c).
Plaintiff served its contentions in a timely manner (hereinafter “May
Contentions”) (Docs. 131-4 through 131-8), but Defendants contend Plaintiff
“failed to identify specifically where each limitation of each asserted claim is
found as required by D. Kan. Pat. Rule 3.1.” (Doc. 131, at 4-5.) According to
Defendants, the May Contentions consist of conclusory statements that are devoid
of “explanation or factual support.” (Id., at 5.) The Motion to Compel (Doc. 130)
requests the Court order Plaintiff to provide conforming contentions.
Although the parties conferred on this issue, they were not able to reach an
agreement “as to the sufficiency of [Plaintiff’s] infringement contentions, the
production and identification of the supporting evidence, and the timeline for when
[Plaintiff] would serve supplemental infringement contentions.” (Id., at 7.) The
parties engaged in a telephone conference with the Magistrate Judge on August 21,
2020 (Doc. 124), which resulted in the Court granting leave for Defendants to file

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the underlying motion to compel (Doc. 130). Therein, Defendants sought to
compel Plaintiff
to provide infringement contentions that satisfy their
obligation to identify specifically where each limitation
of each asserted patent claim is found in the accused
products to adequately place Defendants on notice of the
alleged infringement and any factual support, evidence
and explanations, including any pre- and post-suit testing
of the accused products.
(Doc. 131, at 1.)
Defendants contend that they were in the process of drafting their reply brief
in support of the Motion to Compel “the evening before the [reply] deadline, when,
without prior notice, [Plaintiff] served eleventh-hour contentions with new
infringement theories” (hereinafter “October Contentions”). (Doc. 160, at 2.)
According to Defendants, “[r]ather than address the deficiencies identified in
Defendants’ motion to compel, these [October Contentions] instead introduced
new infringement theories.” (Id.)
This resulted in Defendants filing their Motion to Stay Consideration of
Motion to Compel (Doc. 156) and Motion to Strike (Doc. 159) Plaintiff’s October
Contentions. According to Defendants, the October Contentions “contain new
infringement theories that do not accord with No Spill’s infringement contentions
from May 2020 and which were improperly served without following the

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procedures and requirements set forth in D. Kan. Pat. R. 3.5 for amending
infringement contentions.”1 (Doc. 160, at 1.)
Defendants allege that Plaintiff had previously indicated that the relevant
testing “included only the testing described in a declaration submitted by inventor
Thomas M. Cray during the prosecution of the ’075 patent (‘Cray Declaration
Test’), which formed the basis for [Plaintiff’s] infringement theories.” (Doc. 160,
at 2 (referring to Plaintiff’s response to Interrogatory No. 15, Doc. 136-1, at 5).)2
Defendants further allege that Plaintiff
confirmed that the Cray Declaration Test was the only
test performed on Defendants’ products during the
parties’ August 13, 2020 meet and confer. And yet, in
[Plaintiff’s] eleventh-hour amended infringement
contentions … , [Plaintiff] provided citations to an
entirely different set of tests with a new set up and
materially different procedures (‘CSE Tests’). These
CSE Tests also differ from the tests performed by
[Plaintiff’s] expert on [Plaintiff] FMDs to support its
claim construction theories (‘No Spill Product Tests’).
(Doc. 160, at 2-3.) Defendants thus argue that the “CSE Tests therefore present
new infringement theories that cannot be introduced at this stage in the litigation

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Defendants also seek an Order striking Plaintiff’s interrogatory responses relying on
these contentions and infringement theories. (Doc. 159.) Defendants also seek their
attorney fees. (Id.)
2
Plaintiff’s response to Interrogatory No. 15 states that “[a] spark test, as detailed in the
affidavit submitted by inventor Tom Cray during prosecution of the application that
issued as the ’075 patent and in which the flash suppressor of the Accused
Instrumentalities was submerged in liquid gasoline and then subjected to a spark (e.g.
ignition source), was conducted.” (Doc. 163-1, at 5.)
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and should be stricken from the record.” (Id., at 3.) Defendants also argue that
Plaintiff “withheld information about its initial testing, awaited for new,
presumably more favorable testing results, and retroactively changed its
infringement positions to match the CSE Tests.” (Id.)
ANALYSIS
A.

Should the October Contentions be Stricken because of Scheduling
Order Deadline?
Defendants argue that Plaintiff’s October Contentions should be stricken as

should Plaintiff’s reliance on the new theories in its interrogatory responses
because the October Contentions “belatedly and improperly introduce new
infringement theories.” (Doc. 160, at 5.) According to Defendants, the October
Contentions “introduce CSE Tests that materially differ from the Cray Declaration
Tests from the prosecution history of the ’075 patent that No Spill purportedly
relied on for bringing suit and the No Spill Product Tests performed to support No
Spill’s claim construction theories.” (Id.)
The Court does not agree that the October Contentions improperly present
new infringement theories. Rather, in the Court’s opinion, Plaintiff has merely
attempted to comply with Defendants’ demand, enunciated in Defendants’ motion
to compel, that Plaintiff
provide infringement contentions that satisfy their
obligation to identify specifically where each limitation
of each asserted patent claim is found in the accused
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products to adequately place Defendants on notice of the
alleged infringement and any factual support, evidence
and explanations, including any pre- and post-suit testing
of the accused products.
(Doc. 131, at 1.) It seems nonsensical for Defendants to demand that Plaintiff be
compelled to supplement its infringement contentions with factual support
including product testing and then immediately move to strike such information as
improper and untimely. Defendants’ positions appear to be incongruous.
Plaintiff asserts that rather than addressing the issue of notice of its theory of
infringement, Defendants are improperly attempting to ‘pre-try the case’ by
challenging the testing procedures” used by Plaintiff’s expert to prove Plaintiff’s
infringement theory. (Doc. 167, at 10-11.) Plaintiff argues that the October
Contentions “do not advance any ‘new infringement theories’” but rather “simply
provide the additional test results (demanded by Defendants) that prove
[Plaintiff’s] straightforward infringement theory: the Scepter FMD is configured
to retain sufficient fuel in its perforations to provide a fuel-air mixture that is ‘too
rich to combust’ inside the FMD.” (Doc. 167, at 3.)
Plaintiff continues that “Defendants’ Motion … conflates two very different
standards: (1) the requirement of Local Patent Rule 3.1 that initial infringement
contentions must provide reasonable notice of the claimant’s theory of
infringement; and (2) the sufficiency of the evidence submitted to prove
infringement under that theory at trial.” (Id., at 11; see also Doc. 136, at 20-21.)
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According to Plaintiff, “[r]ather than actually addressing notice of [Plaintiff’s]
infringement theory, Defendants are improperly attempting to ‘pre-try the case’ by
challenging the testing procedures employed by [Plaintiff’s] expert that prove
[Plaintiff’s] infringement theory.” (Doc. 167, at 11-12; see also Doc. 136, at 2021.)
It appears to the Court that Defendants are conflating the requirements for
notice of initial infringement contentions with the proof and evidence necessary in
the later stages of the litigation.
For example, the scope of infringement contentions and
expert reports are not co-extensive. See Fenner Invs.,
Ltd. v. Hewlett–Packard Co., 2010 WL 786606, at *2
(E.D. Tex. Feb. 26, 2010). Infringement contentions
‘need not disclose specific evidence nor do they require a
plaintiff to prove its infringement case, whereas expert
reports must include a complete statement of the expert’s
opinions, the basis and reasons for them, and any data or
other information considered when forming them.’ …
Similarly, infringement contentions are not the correct
stage to ‘pre-try the case . . . by conducting a highly
detailed and rigorous analysis of the preliminary claim
infringement contentions.’ STMicroelectronics, Inc. v.
Motorola, Inc., 308 F.Supp.2d 754, 756 (E.D.Tex.2004).
Shurtape Techs., LLC v. 3M Co., 2011 WL 4750586, at *2 (W.D. N.C. Oct. 7,
2011) (applying similar local patent rules)). Defendants should be making such
challenges on the merits rather than through an attack on Plaintiff’s infringement
contentions.

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Citing numerous cases from various jurisdictions, Defendant argues that
Plaintiff “cannot introduce new infringement theories months after it is required
under the Patent Rules and Scheduling Order.” (Id., at 8.) Even assuming that
Plaintiff is attempting to introduce new infringement theories, the cases cited by
Defendant are distinguishable from circumstances before the Court because the
cases involve parties attempting to change the infringement contentions even later
in the case. (Id., at 18-21.) These cases also do not involve amendments made as a
result of a motion to compel amendments.
For instance, in Looksmart Grp., Inc. v. Microsoft Corp., the court granted
a motion to strike an expert report that contained new infringement theories 13
months after the infringement contentions were initially filed and 10 months after
the Court granted the parties’ stipulation giving the plaintiff leave to amend the
contentions, which the plaintiff failed to do in a timely manner. No. 17-4709-JST, 
2019 WL 7753444 (N.D. Cal. Oct. 17, 2019). In BookIT Oy v. Bank of Am.
Corp., the Circuit Court affirmed the decision of the district court that it would be
unfair to grant leave to amend to add new theory of infringement after the court
issued its Markman order. 817 Fed. App’x 990 (Fed. Cir. 2020). In Neonatal
Prod. Grp., Inc. v. Shields, a court in this District granted a motion to strike
infringement theories as a sanction for violating the deadlines in the Scheduling
Order. 276 F. Supp. 3d 1120 (D. Kan. 2017). Those infringement theories were
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presented, however, in an expert declaration submitted in opposition to a motion
for summary judgment. Id., at 1127.
These cases, as well as the others relied upon by Defendants (Doc. 160, at 89), are clearly factually distinguishable from the situation currently before the
Court. Simply stated, the same potential for undue prejudice to the defendants in
those cases does not exist here. First, Plaintiff supplemented its infringement
contentions because Defendants requested that Plaintiff do so. Second, the present
case is at an earlier stage in the litigation. See generally FOX Factory, Inc. v.
SRAM, LLC, No. 18-0130-WJM-NYW, 2019 WL 1450622, at *1-2 (D. Colo.
April 2, 2019) (allowing the plaintiff to amend its infringement contentions after
the issuance of the Court’s claim construction order).
The deadline for claim construction discovery in the present case had not
expired at the time Plaintiff submitted the October Contentions. (See Doc. 125, at
2.) Defendants’ Markham brief was not filed until almost two and half months
after the October Contentions were submitted. (Doc. 194.) The Court has
indicated it will consider allowing Defendants to amend their Markham brief, if
necessary, after the resolution the motions addressed in this Order. (See Doc. 200,
Minute Order.) Further, the Court has suspended all remaining deadlines in this
case, to be reset after resolution of the current motions. (Id.) The Magistrate
Judge will set a status conference to determine if adjustments to the discovery and
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briefing deadlines are necessary because of this ruling. In the interest of justice,
Plaintiff’s ability to move forward with its claims properly identified outweighs
any need for the Court to adhere to a rigid timeline at this point in the proceedings.
B.

Should the October Contentions be Stricken for Failure to
Comply with Local Patent Rules?
The District of Kansas Patent Rules provide that amendments to

infringement contentions can occur “only by order of the court upon a timely
showing of good cause.” D. Kan. Pat. R. 3.5(b). Prior to seeking leave to amend,
the amending party has the duty to make reasonable efforts to confer with opposing
counsel, which Defendants allege Plaintiff failed to do. (Id.) Further, “[i]f the
parties resolve the issue, the moving party must file an unopposed motion for leave
to amend,” or if “the proposed amendment remains unresolved … counsel for the
moving party must contact the magistrate judge and arrange a telephone
conference.” D. Kan. Pat. R. 3.5(c).
Defendant argues that the October Contentions should be stricken because
Plaintiff failed to satisfy any of these procedural requirements prior to submitting
them. (Doc. 160, at 11.) Defendant continues that even though it requested
Plaintiff provide supplemental infringement contentions because of deficiencies,
Plaintiff should not be exempted from the requirements of this District’s Patent

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Rules or be allowed to introduce what Defendants argue are new infringement
theories. (Id.)
Plaintiff responds that Defendants’ procedural challenge to the October
Contentions is based on the “false premise” that the October Contentions constitute
new infringement theories. (Doc. 167, at 21.) The Court addressed this argument
in the preceding section and found that Plaintiff has not set forth “new” theories,
but rather has provided supplemental information relating to their theories as
demanded by Defendants.
Further, Plaintiff argues Defendant’s procedural challenge lacks merit
because:
(1) Defendants repeatedly demanded that [Plaintiff]
provide supplemental initial infringement contentions;
(2) [Plaintiff] repeatedly agreed to have its expert
measure and test the Scepter FMD(s) and provide
Defendants with the results thereof if Defendants would
simply confirm whether one or more versions of the
Scepter FMD had been used and produce exemplar
FMD(s); (3) Defendants refused to state until just days
prior to the parties’ August 21, 2020 conference with
Judge Gale that there had only been one Scepter FMD,
contradicting their prior denial in their Answer and
subsequent representation through counsel that the
Scepter FMD had gone through changes ‘over time’; (4)
Defendants’ simultaneous refusal to produce an exemplar
FMD; and (5) only upon receiving the supplemental
contentions that they demanded, and which provided
expert evidence of Defendants’ clear infringement, did
Defendants change their position and assert that
[Plaintiff] should have sought leave to serve ‘amended’
contentions.
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(Doc. 167, at 21-22.)
Plaintiff requests, in the alternative, that if the Court finds it should have
sought leave to submit the October Contentions, the Court grant Plaintiff leave to
do so. (Doc. 167, at 23.) Defendant concedes that “if the accused infringer
requests additional information, this could support good cause for amendment to
provide that information.” (Doc. 160, at 11.) The Court concurs that Plaintiff’s
submission of information requested by Defendants supports good cause for
allowing an amendment. Additionally, Plaintiff’s argument that there is no
prejudice to Defendant in allowing supplemental contentions that have already
been served (Doc. 167, at 22) is even more persuasive now that the Court has
suspended the deadlines in this case (see Doc. 200, Minute Order).
As also discussed above, the Patent Rules provide that prior to seeking
leave to amend, the amending party has the duty to make reasonable efforts to
confer with opposing counsel, which Defendants contend Plaintiff failed to do.
Even if Defendants would have agreed to Plaintiff’s request to amend, Plaintiff
would still have been required to file an unopposed motion for leave to amend, or
if arrange for a telephone conference with the assigned magistrate judge. D. Kan.
Pat. R. 3.5(c).
While Defendant is correct that Plaintiff did not follow this procedure, the
situation presented is somewhat unusual in that Defendant moved to compel
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infringement contentions and then, after receiving them, immediately moved to
strike them. There is no dispute, however, that the parties engaged in certain
communications regarding Defendants’ issues with the infringement contentions.
The October Contentions did not arrive out of the blue. Further, unlike the cases
cited by Defendants (discussed in the preceding section), Defendants were not
caught entirely off guard at a late stage in the litigation. As such, in the interests of
justice and judicial economy, the Court DENIES Defendants’ Motion to Strike
(Doc. 159).
CONCLUSION
For the reasons set forth above, Defendants’ Motion to Strike (Doc. 159) is
DENIED. In denying Defendants’ Motion to Strike, Defendants’ Motion to
Compel (Doc. 130) and Motion to Stay (Doc. 156) are found to be MOOT.
Defendants have also sought attorney’s fees “related to Defendants’ Motion
to Compel, this Motion to Strike, and related efforts pursuant to Fed. R. of Civ. P.
37.” (Doc. 160, at 15.) The Court DENIES Defendants’ request for attorney’s
fees as to the Motion to Strike (Doc. 159), as that underlying motion has been
denied. As for Defendants’ request for attorney’s fees relating to the Motion to
Compel, the Court also DENIES this request. Although the Motion to Compel has
been found moot rather than denied, the Court would have denied that discovery
motion based on the reasons contained in Plaintiff’s responsive briefs that
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Defendant improperly conflated the requirements of notice of Plaintiff’s theory of
infringement and Plaintiff’s requirements for proof of infringement at trial. (Doc.
136, at 20-21; Doc. 167, at 11.) Because the underlying Motion to Compel would
have been denied if it had been decided on the merits, the Court DENIES
Defendants’ request for attorney’s fees relating to that motion.
Finally, Plaintiff’s request for leave to amend its infringement contentions
(see Doc. 167, at 23) is GRANTED. The Court retroactively considers the
October Contentions to constitute Plaintiff’s amended infringement contentions.

IT IS THEREFORE ORDERED that Defendants’ Motion to Compel (Doc.
130) and Motion to Stay Consideration of Motion to Compel (Doc. 156) are found
to be MOOT.
IT IS FURTHER ORDERED that Defendants’ Motion to Strike Plaintiff’s
Amended Infringement Contentions (Doc. 159) and request for attorney’s fees are
DENIED.
IT IS SO ORDERED.
Dated at Wichita, Kansas, on this 8th day of January, 2021.
S/ KENNETH G. GALE

KENNETH G. GALE
United States Magistrate Judge

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