Trustees of Boston University v. Everlight Electronics Co., Ltd. et al

Filing 1468

Chief Judge Patti B. Saris: ORDER entered. For the foregoing reasons, Trustees of Boston University's motion 1394 is ALLOWED and Epistar Corporation's DENIED re 1406 . (Geraldino-Karasek, Clarilde)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

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v.
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EPISTAR CORPORATION, et al.,
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Defendant
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TRUSTEES OF BOSTON UNIVERSITY,
Plaintiff

Civil Action
No. 12-11935

ORDER
October 14, 2015
Saris, C.J.
Plaintiff Trustees of Boston University (BU) has filed suit
against Epistar Corporation, Everlight Electronics Co., Ltd.,
and Lite-On Inc., alleging infringement of Claims 1, 2, 7, 9,
10, 18, and 19 of U.S. Patent No. 5,686,438. The defendants
allege noninfringement of all claims as well as invalidity of
the underlying patent. Before the Court is BU’s motion in limine
to exclude noninfringement defenses based on non-Epistar LEDS
(Docket No. 1394) and Epistar’s motion in limine to exclude
evidence regarding accused products not represented by the four
Epistar Exemplar parts (Docket No. 1406). After hearing, I ALLOW
BU’s motion and DENY the defendants’ motion.

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BU argues that the four Epistar Exemplar parts identified
during summary judgment briefing represent every Accused Product
in this case. Accordingly, they contend, the Court should bar
Everlight and Lite-On from offering noninfringement arguments
based on non-Epistar parts at trial. In response, the defendants
argue that the parties had a limited draft stipulation that the
four Exemplars are representative only of certain Epistar parts,
and do not cover other Epistar LEDs or LED packages made by
Everlight and Lite-On using GaN chips from non-Epistar
suppliers. The defendants thus request that all evidence and
testimony regarding these non-covered parts be excluded.
I deny the defendants’ motion to exclude all evidence of
parts that allegedly were not made by Epistar from the upcoming
trial. Everlight and Lite-On responded to BU’s master
interrogatories by adopting Epistar’s Exemplar defense, and
never made any statements indicating an intent to raise
independent noninfringement defenses based on products built
with GaN chips from third-party suppliers. Remarkably, the
defendants admitted at the hearing that they have never produced
any documents showing that the non-Epistar accused parts do not
infringe the ‘738 patent, or tested those parts to determine
whether or not they infringe.
The parties submitted a draft stipulation, never finalized,
and an email exchange addressing this issue, both of which state
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that the Exemplars cover “all GAN wafers sold by Epistar since
2007.” Docket No. 1060-1, Ex. A; Docket No. 1435-1, Ex. A.
Epistar now argues that the Exemplar parts cover only Epistar’s
Venus, Mars, J, L, and F series GaN parts. But the record
contains no evidence that there are any Epistar parts not
falling into these named series, and even if there are, the
defendants have persistently failed to respond to BU’s repeated
requests for Exemplars covering all Accused Products.
Federal Rule of Civil Procedure 37(c)(1) provides a “selfexecuting sanction” for the failure to make required evidentiary
disclosures. Ortiz-Lopez v. Sociedad Espanola de Auxilio Mutuo Y
Beneficiencia de P.R., 248 F.3d 29, 33 (1st Cir. 2001). The
court may preclude late-disclosed evidence in its discretion if
the untimely disclosure was not (1) substantially justified and
(2) harmless under Fed. R. Civ. P. 26. Id. Here, the defendants
offered no explanation for their failure to turn over nonEpistar parts, and this conduct cannot be characterized as
harmless where BU prepared expert reports and trial theories
only on the basis of the Exemplars. See HipSaver Co., Inc. v.
J.T. Posey Co., 497 F. Supp. 2d 96, 103-104 (2007) (late
disclosure not substantially justified when in violation of
court’s scheduling order and not harmless where plaintiff
“prepared its expert report on the basis of incomplete data”).

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For the foregoing reasons, BU’s motion is ALLOWED and
Epistar’s DENIED.

/s/ PATTI B. SARIS
Patti B. Saris
Chief United States District Judge

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