Total Rebuild, Inc. v. PHC Fluid Power L L C

Filing 375

MEMORANDUM RULING re 296 MOTION in Limine re Systems Not Identified with Specificty filed by P H C Fluid Power L L C. Signed by Judge Terry A Doughty on 9/9/2019. (crt,Crawford, A)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF LOUISIANA
LAFAYETTE DIVISION
TOTAL REBUILD, INC.

CASE NO. 6:15-CV-1855

VERSUS

JUDGE TERRY A. DOUGHTY

PHC FLUID POWER, L.L.C.

MAG. JUDGE CAROL B.
WHITEHURST
RULING

This is a patent infringement case in which Plaintiff Total Rebuild (“Plaintiff”) contends
systems and/or methods utilized by or through Defendant PHC (“Defendant”) infringe claims of
United States Patent No. 8,146,428 (“the ’428 Patent”). The ’428 Patent is directed to systems
and methods for safely testing devices and components under high-pressure.
Pending before the Court is Defendant’s “Motion in Limine regarding Accused Systems
Not Identified in Infringement Contentions” [Doc. No. 296]. Plaintiff responded to the motion.
[Doc. No. 331].
For the following reasons, the motion is GRANTED IN PART and DENIED IN PART.
I.

PERTINENT FACTS AND PROCEDURAL HISTORY
Defendant moves the Court to enforce the Patent Rules for the Eastern District of Texas

(“Patent Rules”) in this case. Defendant argues that the Joint Scheduling Order set a due date of
August 8, 2016, for Plaintiff to comply with Patent Rule 3-1. [Doc. No. 296-1 at 5] (citing Doc.
No. 50 at 1).1 Patent Rule 3-1 requires Plaintiff to serve infringement contentions that identify the
“Accused Instrumentality,” and includes “[a] chart identifying specifically where each element of
each asserted claim is found within each Accused Instrumentality.” [Doc. No. 51-1 at 6-7].

Citations to the parties’ filings are to the filing’s number in the docket [Doc. No.] and pin cites
are to the page numbers assigned through ECF.
1

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On August 23, 2016, Plaintiff served its Disclosure of Asserted Claims and Preliminary
Infringement Contentions (“Original Infringement Contentions”) on Defendant. [Doc. No. 296-1
at 5). Defendant argues that the Original Infringement Contentions include only generic names
without any reference to any specific device or process as required by Patent Rule 3-1(b). Id. at 6.
On January 23, 2017, Plaintiff served its Supplemental Disclosure of Asserted Claims and
Preliminary Infringement Contentions (“First Supplemental Contentions”) on Defendant. Id.
Defendant contends that the First Supplemental Contentions include the identical Patent Rule 31(b) disclosure found in the Original Infringement Contentions. Id. Defendant further contends
that Plaintiff’s counsel “spent over 20 hours at PHC’s Houston, Texas facility reviewing,
inspecting, and scanning design documents, drawings, and other related documents for pressure
testing systems sold by PHC,” on June 7-9, 2017. Id. at 7.
On August 27, 2018, over a year after the on-site review, Plaintiff served its Second
Supplemental Disclosure of Asserted Claims and Preliminary Infringement Contentions (“Second
Supplemental Contentions”) on Defendant. Id. at 8.

Defendant argues that the Second

Supplemental Contentions include only generic names without any reference to any specific
device or process as required by Patent Rule 3-1(b). Id. at 9. On November 30, 2018, Plaintiff’s
counsel sent the following email to Defendant regarding infringement contentions for specific
units. Id. at 10.

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[Doc. No. 296-2 at 2]. On December 6, 2018, Plaintiff’s counsel sent the following email stating
that its Third Supplemental Infringement Contentions would be “accurate and sufficiently detailed
regarding each unit.”

[Doc. No. 296-3 at 2]. On December 10, 2018, over three and a half years after this case began,
Plaintiff served its Third Supplemental Infringement Contentions on Defendant. [Doc. No. 296-1
at 11).

On February 28, 2019, Defendant moved to strike Plaintiff’s Third Supplemental

Infringement Contentions (“Motion to Strike”). [Dkt. No. 243]. Defendant argued in the Motion
to Strike that Plaintiff was attempting to vastly expand its infringement theories, and that the Third
Infringement Contentions were untimely because they were served over 2 years after the deadline,
and after fact discovery had closed. Id. at 1.

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On March 28, 2019, the Court granted the Motion to Strike and found that Plaintiff was
improperly trying to expand its infringement contention by taking the new position that “using
pumps or pump systems outside an explosion-safety housing can infringe its patent.” [Doc. No.
263 at 2] (emphasis in original). The Court noted that Plaintiff “does not dispute that its latest
contentions ‘vastly expand’ its claims or that it failed to serve the contentions until December
2018.” Id. Instead, Plaintiff argued that its supplementation was timely because the Court has not
adopted the proposed scheduling order (Doc. No. 162-1) and local rules allow it to amend its
contentions as late as 30 days after a claim-construction ruling. Id.
The Court found that “[b]ecause the Court has not made a claim-construction ruling, Local
Patent Rule 3-6(a) does not apply.” Id. at 3. The Court further found that the factors courts
consider when evaluating motions to strike all weighed in favor of striking the contentions. Id. at
4-5. The Court then granted Defendant’s Motion to Strike Infringement Contentions (Doc. 243),
and further ordered that Plaintiff “is PRECLUDED from proceeding on any infringement theory
not identified with sufficient specificity in its original infringement contentions, first supplemental
infringement contentions, or second supplemental infringement contentions. A boilerplate
allegation of infringement under a doctrine-of-equivalents theory is insufficient.” Id. at 6.
On April 1, 2019, Plaintiff’s counsel stated in an email that it was asserting infringement
by “one additional system attached as a pdf to this email,” which is identified in the email as
“PHC-TB-15-W-ASFB10-ASF150-RV-CR-SPCL” to Wells Dynamics. [Doc. No. 296-1 at 12].
Per the April 1, 2019 email, the eight systems Plaintiff identified as infringing are as follows:
1. PHC-TB-30-W-ASF100-HSF302-RC to Cameron (hereinafter “Cameron
Black”)
2. PHC-TB-23-W-ATV4-HSF202-RV-RC to Cameron (hereinafter “Cameron
North Dakota”);

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3. PHC-TB-15-W-ASFB10-ASF150-RC-CR-SPCL to Well Dynamics (hereinafter
“Well Dynamics”);
4. PHC-TB-23-W-ATV4-HSF202-4RC to GE (hereinafter “GE Oil”);
5. PHC-TB-15-W-ATV4-GSF100-ASF150-AGT62-152-RC to Baker Hughes
(hereinafter “Baker Hughes Emmott”);
6. PHC-TB-15-W-ASFB22-HSF202-RC to Cameron (hereinafter “Cameron
Brown”);
7. PHC-TB-20-W-ATV4-HSF202-RC to GE (hereinafter “GE Canton”); and
8. PHC-TB-15-W-ATV4-GSF100-ASF150-DL-1 to Baker Hughes (hereinafter
“Baker Ok Long”).
Id. at 12. On July 19, 2019, Plaintiff served its proposed pretrial order on Defendant. Id. (citing
Doc. No. 290-2). Defendant argues that in its proposed pretrial order, Plaintiff attempts to include
place holders that do not identify specific systems. [Doc. No. 296-1 at 12]. Defendant also argues
that Plaintiff identifies two more systems of infringement. Id. The systems or categories of
systems that Plaintiff accuses of infringement in its draft pretrial order are as follows:
1. “PHC products and services identified as PHC Bunker Test Systems, also
identified as ‘Test Bench’, ‘Test Bunker’, ‘High/Low Pump System’, and denoted
with the model no. prefix ‘PHC-TB…’”;
2. “PHC’s products and services identified as Remote Control, Multiple Outlet Test
System, also identified as ‘High/Low Pump Skid’ and denoted with the model no.
prefix ‘PHC-PS…’”;
3. Cameron North Dakota (PHC-TB-23-W-ATV4-HSF202-RV-RC to Cameron
a/k/a PHC-PS-23-W-ATV4-HSF202-RV-RC);
4. Cameron Black (PHC-TB-30-W-ASF100-HSF302-RC to Cameron);
5. GE Oil (PHC-TB-23-W-ATV4-HSF202-4RC to GE a/k/a PHC-PS-23-WATV4-HSF202-RC);
6. Cameron Brown (PHC-TB-15-W-ASFB22-HSF202-RC to Cameron);
7. Baker Hughes Emmott (PHC-TB-15-W-ATV4-GSF100-AGT62-152-RC to
Baker Hughes);

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8. Baker Ok Long (PHC-TB-15-W-ATV4-GSF100-ASF150-DL-1 to Baker
Hughes Oklahoma);
9. PHC-TB-10-W-ATV-GSF100-DL-1 to Baker Hughes Oklahoma (hereinafter
“Baker Ok Short”);
10. GE Canton (PHC-TB-20-W-ATV4-HSF202-RC to GE); and
11. “an additional infringing system at the Cameron North Dakota facility.”
[Doc. No. 290-2 at 5-7]. Defendant argues that the Court should “exclude and preclude Plaintiff
from asserting infringement by the systems and categories of systems identified at 1-4 and 11
above because (1) none of the systems were identified in an infringement contention ‘by name and
model number,’ as required by Patent Rules 3-1(b); (2) claim charts are not provided for any
system identifying ‘specifically where each element of each asserted claim is found within each
[accused system],’ as required by Patent Rule 3-1(c); and (3) Total’s assertion of the systems is
already precluded by the Ruling and Order because infringement theories for each system are not
identified with ‘sufficient specificity’ in the Original, First Supplemental, or Second Supplemental
Infringement Contentions.” [Doc. No. 296-1 at 13-14].2
Plaintiff responds that Defendant does not point to evidence demonstrating lack of
“adequate notice and information” by which Plaintiff might “practice litigation by ambush.” [Doc.
No. 331 at 2] (citing Computer Acceleration Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 822
(E.D. Tex., 2007)). Plaintiff argues that there is no credible assertion that Defendant lacks the
actual knowledge, which is the overriding purpose of the procedural rule it seeks enforced. Id.

In its motion, Defendant includes a footnote stating that “[t]he systems identified in #5-10 above
have their pump and pumps systems outside of the explosion proof housing. The Court has already
ruled Total may not assert infringement by systems with pumps and pumps systems outside of the
explosion proof housing because Total did not timely disclose that theory of infringement. Ruling
and Order at 2, 6 (Dkt. 263). PHC has filed a separate motion in limine to exclude those systems.”
[Doc. No. 296-1 at 14 n.5]
2

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II.

ANALYSIS
Patent Rule 3-1 requires Plaintiff to serve infringement contention on Defendant that

include the following information:
(b) Separately 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 shall be as specific
as possible. Each product, device, and apparatus must be identified by name or
model number, if known. Each method or process must be identified by name, if
know, or by any product, device, or apparatus which, when used, allegedly results
in the practice of the claimed method or process:
(c) A chart identifying specifically where each element of each asserted claim is
found within each Accused Instrumentality, including for each element that such
party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s),
act(s) or material(s) in the Accused Instrumentality that performs the claimed
function.
[Doc. No. 51-1 at 6-7]. “The overriding principle of the Patent Local Rules is that they are
designed [to] make the parties more efficient, to streamline the litigation process, and to articulate
with specificity the claims and theory of a plaintiff’s infringement claims.” Geovector Corp. v.
Samsung Elecs. Co., No. 16-cv-02463-WHO, 2017 U.S. Dist. LEXIS 3626, at *8 (N.D. Cal. Jan.
9, 2017) (citation omitted). Here, Defendant does not contend that Plaintiff has failed to identify
specific systems. Indeed, the evidence before the Court indicates that Plaintiff has identified
specific systems, whether it be through emails or infringement contentions. “[A]ll courts agree
that the degree of specificity under Local Rule 3-1 must be sufficient to provide reasonable notice
to the defendant why the plaintiff believes it has a ‘reasonable chance of proving infringement.’”
Id. (citation omitted). Moreover, “the local rules do not ‘require the disclosure of specific evidence
nor do they require a plaintiff to prove its infringement case.’” Id. (citation omitted).
However, the Local Rules do require identifying the Accused Instrumentality “as specific
as possible.” The evidence indicates that Plaintiff had the opportunity to conduct an on-site review
and was able to identify specific systems. Indeed, Plaintiff’s counsel was able to identify seven

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specific systems in the November 30, 2018 email, and Plaintiff’s counsel further confirmed these
units as the Accused Instrumentality “so that [Defendant’s counsel] are not kept in the dark as to
what units our contentions will be directed.” [Doc. Nos. 296-2 and 296-3]. Thus, Plaintiff has
provided Defendant with adequate notice as it relates to specific units previously identified by
Plaintiff.
That said, the evidence before the Court also indicates that Plaintiff is attempting to insert
place holders to allow it to accuse previously unidentified systems. The Court finds that this is
“litigation by ambush.” Comp. Acceleration Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 822
(E.D. Tex. 2007). To the extent that a system was not specifically identified by Plaintiff, Plaintiff
is precluded and excluded from accusing a newly identified system under the guise that it includes
the prefix “PHC-TB” or “PHC-PS”, or that it was “an additional infringing system at the Cameron
North Dakota facility.” See, e.g., Doc. No. 260-2 at 5-6, 7. This case has labored on for more than
four years. The undersigned is the third district court judge assigned to this case. There has been
multiple Scheduling Orders, and the trial date was continued multiple times, at the request of both
Defendant and Plaintiff.3 The parties have had more than ample to prepare the case for trial. Any
prejudice that results is due that parties’ lack of diligence or attempt at last minute gamesmanship.4

For a detailed summary of the procedural history of this case see the Court’s Ruling on
Defendant’s Motion to Exclude the Royston Report and Preclude the Testimony of John W.
Royston. [Doc. No. 359 1-4].
4
In deciding this motion, the Court has considered the following non-exclusive list of factors:
1. The danger of unfair prejudice;
2. The length of the delay and its potential impact on judicial proceedings;
3. The reason for the delay, including whether it was within the reasonable control of the
party responsible for the delay;
4. The importance of the particular matter, and if vital to the case, whether a lesser
sanction would adequately address the other factors to be considered and also deter future
violations of the court's scheduling orders, local rules, and the federal rules of procedure;
and
5. Whether the offending party was diligent in seeking an extension of time, or in
3

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In summary, to the extent that Plaintiff previously identified a specific system, the motion
is denied. Specifically, Plaintiff is not precluded or excluded form accusing the following systems:
1. Cameron Black (PHC-TB-30-W-ASF100-HSF302-RC to Cameron);
2. Cameron North Dakota (PHC-TB-23-W-ATV4-HSF202-RV-RC to Cameron a/k/a
PHC-PS-23-W-ATV4-HSF202-RV-RC);
3. Well Dynamics (PHC-TB-15-W-ASFB10-ASF150-RC-CR-SPCL);
4. GE Oil (PHC-TB-23-W-ATV4-HSF202-4RC to GE a/k/a PHC-PS-23-W-ATV4HSF202-RC);
5. Baker Hughes Emmott (PHC-TB-15-W-ATV4-GSF100-AGT62-152-RC to Baker
Hughes);
6. Cameron Brown (PHC-TB-15-W-ASFB22-HSF202-RC to Cameron);
7. GE Canton (PHC-TB-20-W-ATV4-HSF202-RC to GE);
8. Baker Ok Long (PHC-TB-15-W-ATV4-GSF100-ASF150-DL-1 to Baker Hughes
Oklahoma); and
9. Baker Ok Short (PHC-TB-10-W-ATV-GSF100-DL-1 to Baker Hughes Oklahoma).
To be clear, inclusion of a system on this list does not mean that Plaintiff is now allowed
to assert new infringement theories that were previously struck by the Court. In other words, this
Ruling and Order does not supersede or revoke the Court’s previous Rulings and Orders regarding
Plaintiff’s Third Infringement Contentions, and Systems with Testing Equipment Outside of the
Housing. See, e.g., Doc. Nos. 263, 282, 283, 327, 328.5
III.

CONCLUSION
For the foregoing reasons, Defendant’s Motion in Limine [Doc. No. 296] is DENIED IN

supplementing contentions, after an alleged need to disclose the new matter became
apparent.
See, e.g., Betzel v. State Farm Lloyds, 480 F.3d 704, 2007 WL 603036, *2 (5th Cir. 2006)(listing
factors to consider for exclusion of evidence)
5
It is the Court’s understanding that the parties agree on which systems on the list have been
previously excluded by the Court. See, e.g., Doc. No. 296-1 at 14 n.5, Doc. No. 331 at 1 n.1.
Page 9 of 10

PART and GRANTED IN PART.
Monroe, Louisiana, this 9th day of September, 2019.

____________________________________
TERRY A. DOUGHTY
UNITED STATES DISTRICT JUDGE

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