Cequent Performance Products, Inc. v. Hopkins Manufacturing Corporation et al

Filing 106

ORDER Granting in Part and Denying in Part Plaintiff's 76 and 80 Motion to Strike Portions of the Horenstein Report and Exclude Defendants' New Invalidity Grounds. Signed by District Judge Matthew F. Leitman. (HMon)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
CEQUENT PERFORMANCE
PRODUCTS, INC.,
Plaintiff,

Case No. 13-cv-15293
Hon. Matthew F. Leitman

v.
HOPKINS MANUFACTURING
CORPORATION et al.,
Defendants.
_______________________________________/
ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFF’S
MOTION TO STRIKE PORTIONS OF THE HORENSTEIN REPORT AND
EXCLUDE DEFENDANTS’ NEW INVALIDITY GROUNDS (ECF ## 76, 80)
This is a patent infringement case.

On March 23, 2017, Plaintiff Cequent

Performance Products, Inc. filed a motion (1) to strike portions of Dr. Mark Horenstein’s
expert report (the “Horenstein Report”) and (2) to exclude Defendant Hopkins
Manufacturing Corporation from relying upon new invalidity grounds that Cequent insists
Hopkins did not timely disclose. (See ECF ## 76, 80.)1 For the reasons stated at the April
26, 2017, hearing on the motion, and as further stated below, the Court GRANTS the
motion in part and DENIES the motion in part.

1

Cequent filed two identical versions of its motion. ECF #76 is unsealed and
contains limited redactions. ECF #80 is sealed and contains no redactions.
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I
Cequent asserts in its Complaint that Hopkins infringed three of Cequent’s patents
(collectively, the “Asserted Patents”) that relate to electronic brake controllers:
 U.S. Patent No. 6,068,352, entitled “Microprocessor-Based Control for
Trailer Brakes” (the “‘352 Patent”);
 U.S. Patent No. 6,012,780, entitled “Brake Controller for Trailer Brakes”
(the “‘780 Patent”), and
 U.S. Patent No. 6,445,993, entitled “Brake Control Unit” (the “‘993 Patent”).
On July 22, 2014, Hopkins served initial invalidity contentions on Cequent that set
forth Hopkins’ legal theories as to how the Asserted Patents are invalid. (See July 22, 2014,
Initial Invalidity Contentions, ECF #76-2.) Hopkins then filed three petitions for inter
partes review with the United States Patent and Trademark Office (the “USPTO”) on
January 23, 2015 (the “IPR Petitions”). (See IPRs, ECF ## 87-4, 87-5, and 87-6.) In the
IPR Petitions, Hopkins argued that claims in the Asserted Patents were invalid. (See id.)
On January 28, 2015, Hopkins served supplemental invalidity contentions in this action
that incorporated the invalidity arguments it made in the IPR Petitions. (See Jan. 28, 2015,
Supp. Invalidity Contentions, ECF #87-3.)
After Hopkins filed the IPR Petitions, it filed a motion with this Court to stay this
action until the USPTO ruled on the petitions. (See ECF #30.) The Court granted the stay
on April 1, 2015. (See ECF #36.) In August 2015, the USPTO refused to institute any IPR
proceedings with respect to the ‘780 and ‘352 Patents and refused to institute an IPR
proceeding on nine claims related to the ‘993 Patent. (See IPR Rulings, ECF ## 37-1, 37-

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2, 37-3.) Cequent thereafter moved to lift the stay (see ECF #37), and the Court granted
that motion on November 13, 2015. (See ECF #40.)
After lifting the stay, the Court entered a Stipulated Scheduling Order on February
8, 2016. (See ECF #41.) The Scheduling Order required Hopkins to serve supplemental
detailed invalidity contentions, including amended theories of anticipation and obviousness
under 35 U.S.C. §§ 102 and 103, by no later than February 15, 2016. (See id. at Pg. ID 95455.) It also required Hopkins to disclose “each item of prior art that forms the basis for any
allegation of invalidity. . . .” (Id. at Pg. ID 954.) It further provided that “if a combination
of items or prior art makes a claim obvious, each such combination, and the reason why a
person of ordinary skill in the art would combine such items must be identified.” (Id.)
Finally, the Scheduling Order obligated Hopkins to submit “[a] chart identifying where
specifically in each alleged item of prior art each limitation of each asserted claim is
found. . . .”2 (Id. at Pg. ID 955.)
The Scheduling Order also required the parties to “seasonably amend” their
contentions in accordance with Rule 26(e) of the Federal Rules of Civil Procedure “upon
learning that the contention is incomplete or incorrect.” 3 (Id. at Pg. ID 956.) The
Scheduling Order further provided that
[t]he parties should timely conduct discovery so that these
contentions can be updated as soon as possible. Any
amendment to a party’s infringement, invalidity, or non2

These provisions of the Scheduling Order are part of this Court’s standard practice
for patent cases.
3

Rule 26(e) of the Federal Rules of Civil Procedure provides that a party must
supplement “in a timely manner. . . .”
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infringement contentions, or other pleading, that is necessary
due to the Court’s claim interpretation ruling, must be timely
made but in no event later than one month after the Court’s
claim construction ruling.
(Id.)
Hopkins complied with the Scheduling Order and timely served supplemental
invalidity contentions on Cequent on February 15, 2016 (the “February 2016 Invalidity
Contentions”). (See ECF #76-3.) Discovery ended on October 7, 2016. The Court then
held a claim construction hearing and issued a written claim construction Opinion and
Order on January 26, 2017. (See ECF #66.)
On February 27, 2017, Hopkins served the 241-page Horenstein Report on Cequent.
(See ECF #76-1.) The Horenstein Report included new invalidity contentions that Hopkins
had not previously identified. At around this same time, Hopkins served final revised
invalidity contentions that identified the new contentions included in the Horenstein report.
(See Hopkins’ Feb. 27, 2017, Invalidity Contentions, ECF #87-12.)
On March 23, 2017, Cequent filed its motion to strike portions of the Horenstein
Report. (See ECF ## 76, 80.) According to Cequent, the Horenstein Report contained
several new legal theories and prior art references that Hopkins had not previously
disclosed in compliance with the Scheduling Order. (See id.) Specifically, Cequent argued
that the Horenstein Report:
 Introduced two previously-undisclosed invalidity theories under 35 U.S.C.
§ 112;

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 Claimed that the ‘780 Patent was invalid based on prior art from U.S. Patent
No. 5,149,176 (the “’176 Patent”), a patent that Hopkins had not previously
identified;
 Identified a “Hayes device” and a “Hayes manual” as prior art that Hopkins
had not previously identified as prior art;
 Asserted that a Sentinel bake controller is prior art that renders claims 5 and
7 of the ‘993 patent invalid even though Hopkins had not previously
identified the Sentinel bake controller as prior art;
 Relied upon a “TMP47C241 data sheet” as prior art even though Hopkins
never disclosed that data sheet as prior art; and
 Included “a number of…new, vague ‘combination’ opinions” that Hopkins
had not previously identified or relied upon.
(ECF #80 at Pg. ID 2902-09.)
The Court held a hearing on Cequent’s motion on April 26, 2017. For the reasons
stated on the record at the hearing, the Court granted the motion in part and denied the
motion in part as follows:
 Based on the agreement of the parties, the Court struck Dr. Horenstein’s
“indefiniteness” argument made under 35 U.S.C. § 112 (included at
paragraph 340 of his report). The Court declined to strike Dr. Horenstein’s
“written description” argument made under 35 U.S.C.

§ 112 (included

at paragraphs 446-49 of his report);
 The Court struck Dr. Horenstein’s contention that the ‘176 Patent is prior art
to the ‘780 Patent;
 The Court struck Dr. Horenstein’s opinions related to the “Hayes device”;
 For the time being, the Court declined to strike Dr. Horenstein’s opinions
related to the “Hayes manual.” The Court told the parties that it would
revisit this issue after Dr. Horenstein’s deposition;
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 The Court determined that Cequent’s request related to the Sentinel bake
controller was moot; and
 For the time being, the Court declined to strike Dr. Horenstein’s opinions
that rely upon the TMP47C24 data sheet. The Court told the parties that it
would revisit this issue after Dr. Horenstein’s deposition.
The Court did not rule on whether the Horenstein Report raised previouslyundisclosed invalidity contentions with respect to prior art combinations, and, if so,
whether the Court should exclude those contentions from this case. That is the only issue
remaining for decision.
II
“A party may not use an expert report to introduce new infringement theories, new
infringing instrumentalities, new invalidity theories, or new prior art references not
disclosed in the parties’ infringement or invalidity contentions.” Largan Precision Co. v.
Genius Elec. Optical Co., 2014 WL 6882275, *1 (N.D. Cal. Dec. 5, 2014) (quotations
omitted). Dr. Horenstein’s reliance on previously-undisclosed prior art combinations in
his expert report violated this rule.
First, the new prior art combinations that Dr. Horenstein relied upon were not
previously disclosed in the February 2016 Invalidity Contentions, or in Hopkins’ earlier
contentions (which were incorporated by reference into the February 2016 Invalidity
Contentions). In the February 2016 Invalidity Contentions, Hopkins stated only that:
In addition to the expressly described combination of art, any
of the prior art references relied upon may be combined under
35 U.S.C. § 103 and together disclose the combination of old
elements claimed in any of the Asserted Claims of the Asserted
Patents. . . . Thus, although not necessarily expressly disclosed
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herein, any of the relied upon combinations may be combined
to render obvious the claims.
(Feb. 15, 2016, Invalidity Contentions, ECF. #76-3 at Pg. ID 2753.) This “catch-all”
statement does not satisfy the Court’s requirements under the Scheduling Order. The
Scheduling Order states that “[i]f a combination of items or prior art makes a claim obvious,
each such combination, and the reason why a person of ordinary skill in the art would
combine such items must be identified.” (Scheduling Order, ECF #41 at Pg. ID 954.)
Hopkins’ general statement does not set forth the specific combinations Dr. Horenstein
identified in his expert report.

Hopkins’ “broad disclaimer[]” in its February 2016

Invalidity Contentions does not save Dr. Horenstein’s newly-identified specific prior art
combinations. Largan Precision Co. v. Genius Elec. Optical Co., 2014 WL 6882275, *1
(N.D. Cal. Dec. 5, 2014) (quotations omitted) (“The requirement that the invalidity
contentions disclose ‘whether each item of prior art anticipates each asserted claim or
renders it obvious’ would be a dead letter if parties could avoid it with broad disclaimers.”);
see also Life Tech. Corp. v. Biosearch Techs., Inc., 2012 WL 4097740, at *3 (N.D. Cal.
Sept. 17, 2012) (striking opinions from expert report and holding that “Defendants’ generic
disclosure [in their invalidity contentions] [was] insufficient to provide a crystallized view
of [Defendants’] invalidity theories”).
Second, disclosing the prior art combinations for the first time in the Horenstein
Report is untimely under the Scheduling Order. As noted above, the Scheduling Order
required Hopkins to serve detailed supplemental invalidity contentions by February 15,
2016.

The Scheduling Order also required Hopkins to timely amend its invalidity

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contentions upon learning that the contentions were incomplete or incorrect. To the extent
that discovery was needed to develop any of its defenses, Hopkins was also required to
timely conduct discovery so that the invalidity contentions could be amended “as soon as
possible.” Here, Hopkins did not disclose the prior art combinations at issue until it served
the Horenstein Report on Cequent. Such a late disclosure does not comply with the
Scheduling Order.
Finally, Hopkins could have timely disclosed the combinations at issue in
compliance with the Scheduling Order, but did not do so. The new prior art combinations
Dr. Horenstein relied upon were readily available when Hopkins prepared the February
2016 Invalidity Contentions, and the combinations should have been disclosed at that time.
Indeed, by the time Hopkins filed its invalidity contentions on February 15, 2016, it had
had more than two years to search for prior art patents and develop its invalidity legal
theories, including the combination theories presented in the Horenstein Report. Moreover,
Hopkins has not persuaded the Court that it could not have developed its new prior art
combinations earlier in the case.
Having concluded that the Horenstein Report relies upon untimely disclosed new
prior art combinations, the Court must decide what sanction, if any, to impose. Under
Rules 16(f) and 37(b)(2)(A)(ii) of the Federal Rules of Civil Procedure, “the Court may
impose any ‘just’ sanction for the failure to obey a scheduling order, including ‘refusing to
allow the disobedient party to support or oppose designated claims or defenses, or
prohibiting that party from introducing designated matters in evidence.’” O2 Micro Int’l
v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006) (quoting Fed. R.
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Civ. P. 16(f) and Fed. R. Civ. P. 37(b)(2)(A)(ii)). Accordingly, if a party in a patent case
fails to timely research its legal theories and amend its contentions, the Court may exclude
the new theory or evidence at trial. See id. at 1367. Many courts have followed this rule
and excluded legal theories that were not timely disclosed in a party’s invalidity
contentions. See, e.g., Verinata Health, Inc. v. Sequenom, Inc., 2014 WL 4100638, *7-8
(N.D. Cal. Aug. 20, 2014); Linear Group Servs., LLC v. Attica Automation, Inc., 2014 WL
3400714, at *4-5 (E.D. Mich. July 11, 2014) (striking invalidity opinions in a declaration
for violating scheduling order); Visteon Global Techs., Inc. v. Garmin Int’l, Inc., 2014 WL
1028918, at *3 (E.D. Mich. Mar. 17, 2014) (denying leave to amend infringement
contentions due to lack of diligence).
For three reasons, the Court concludes that the appropriate sanction is to exclude
the new prior art combinations identified in the Horenstein Report. First, this case is very
far along and the Court has already construed the disputed claim terms. Allowing Hopkins
to add numerous new prior art combinations at this stage of the case would likely delay the
action and may even require the Court to readdress claim construction. Second, Hopkins
admits that Dr. Horenstein seeks to rely upon “tens” of separate prior art combinations in
arguing that the asserted claims at issue are invalid. (Hopkins’ Resp. Br., ECF #87 at Pg.
ID. 2965.) At this late stage of the case, the parties should be narrowing their theories for
trial and dispositive motions, not expanding the number of issues in the case. Finally, as
noted above, Hopkins has not provided a sufficient justification for failing to identify
earlier the prior art combinations. Accordingly, the Court precludes Hopkins from relying
on the new prior art combinations identified in the Horenstein Report.
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IV
For the reasons stated above, Cequent’s Motion to Strike Portions of the Horenstein
Report and to Exclude Hopkins’ New Invalidity Grounds (ECF ## 76, 80) is GRANTED
IN PART AND DENIED IN PART as set forth herein.
The parties shall submit their rebuttal expert report(s) within 30 days of this Opinion
and Order. The parties shall complete depositions of each other’s expert witnesses within
60 days of this Opinion and Order. After expert depositions are completed, the parties shall
contact the Court’s Special Master Christopher G. Darrow to discuss whether the issues for
trial and summary judgment motions can be narrowed by agreement, including reducing
the number invalidity theories per asserted patent claim to a reasonable number. Any
dispositive motions shall be filed no later than 120 days from the date of this Opinion and
Order.
IT IS SO ORDERED.

s/Matthew F. Leitman
MATTHEW F. LEITMAN
UNITED STATES DISTRICT JUDGE
Dated: May 25, 2017

I hereby certify that a copy of the foregoing document was served upon the parties
and/or counsel of record on May 25, 2017, by electronic means and/or ordinary mail.
s/Holly A. Monda
Case Manager
[phone]

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