Choon's Design LLC v. Tristar Products, Inc.
Filing
175
ORDER Granting in Part and Denying in Part 171 Motion to Strike Defendant's Supplemental Contentions. Status Conference set for 5/31/2018 at 3:30 PM before District Judge Victoria A. Roberts (Chambers 1067). Signed by District Judge Victoria A. Roberts. (LVer)
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTICT OF MICHIGAN
SOUTHERN DIVISION
CHOON’S DESIGN INC.,
Plaintiff,
Case No. 14-10848
Honorable Victoria A. Roberts
v.
TRISTAR PRODUCTS, INC.,
Defendant.
____________________________/
ORDER: (1) GRANTING IN PART AND DENYING IN PART
PLAINTIFF’S MOTION TO STRIKE DEFENDANT’S SUPPLEMENTAL
CONTENTIONS [Doc. 171]; AND (2) SETTING DATES
I.
INTRODUCTION
Plaintiff Choon’s Design Inc. (“Choon’s”) moves to strike Defendant Tristar
Products, Inc.’s (“Tristar”) supplemental invalidity contentions, which disclose new prior
art references. The motion is fully briefed.
As set forth below, the Court GRANTS IN PART and DENIES IN PART Choon’s
motion to strike.
II.
BACKGROUND
Choon’s filed this case in February 2014. The Court entered a claim construction
order on April 21, 2016. Subsequently, the Court entered a scheduling order setting a
December 2016 deadline for completion of fact discovery, a dispositive motion cutoff
date in March 2017, and a trial start date of December 5, 2017.
The Court ruled on the parties’ motions for summary judgment on August 10 and
August 15, 2017. On August 17, less than three weeks before the deadline to file
Daubert motions, Tristar sent a letter requesting the Court to amend the schedule and
hold a second Markman hearing on claim terms not construed previously. After holding
an unsuccessful settlement conference on September 8, 2017, the parties submitted
proposed amended schedules in advance of a September 26th status/ scheduling
conference. The Court granted Tristar’s request for a second Markman hearing.
On October 3, 2017, the Court entered a Second Amended Scheduling Order,
which set the following as Step 11: “Tristar makes Final Invalidity and Unenforceability
Contentions (supplementation limited to issues affected by earlier summary judgment
decisions).” That language was adopted from Choon’s proposed schedule. The Court
never discussed the meaning of “affected by” with the parties.
The Court entered a second claim construction order on January 30, 2018.
Tristar then made supplemental invalidity and unenforceability contentions that raise
many new prior art references.
Tristar’s supplemental contentions include more than twice the number of prior
art references for the ‘565 and ‘420 patents than its original contentions. While the
precise number is not clear from briefs, Tristar originally relied on approximately seven
prior art references for the ‘565 patent and five references for the ‘420 patent. Tristar’s
supplemental contentions raise approximately 11 new references for the ‘565 patent
and six new references for the ‘420 patent.
Choon’s moves to strike the new prior art references; it says Tristar should have
raised them sooner.
Tristar says the new references are appropriate because they relate to issues
affected by either the summary judgment rulings or the second claim construction.
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Despite Tristar’s position that the second claim construction and summary
judgment rulings affected its invalidity positions/defenses so significantly that it was
justified to more than double prior art references, Tristar kept all but one of its original
prior art references. Viewing these facts generally, the Court finds Tristar’s decision to
more than double its prior art references four years after the case was filed and long
after discovery closed (on all issues other than expert discovery on damages)
problematic. If the second claim construction and summary judgment rulings had
affected Tristar’s invalidity contentions significantly, it would have dropped more than
one of its original contentions. The Court did not intend, much less consider, that the
Second Amended Scheduling Order provide Tristar the opportunity to broaden its
contentions so liberally.
Nevertheless, the Court reviewed Tristar’s new prior art references to determine
whether they should be stricken.
III.
DISCUSSION
A.
Meaning of “affected by” in Second Amended Scheduling Order
Determining whether Tristar’s supplemental invalidity contentions may stand or
should be stricken requires the Court to first resolve the parties’ dispute over the
“affected by” language in the Second Amended Scheduling Order.
Choon’s says “affected by” is a “limitation” that means “if the Summary Judgment
Decision or Second Claim Construction resulted in [an adverse construction or] some
change that [Tristar] could not have expected, it should be given the opportunity to
adjust its positions, as necessary.”
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Tristar gives “affected by” its broadest possible meaning. Tristar says that under
the scheduling order, “it was not limited to supplement its contentions only where the
Court’s claim construction and summary judgment ruling ‘resulted in some change that
a party could not have expected’”; rather, it says “[t]he order permits supplementation
on any issue ‘affected by’ the Court’s rulings.”
Choon’s contends that Tristar’s position is “circular” and “would mean the
limitation has no limitations.” It says, “[a] fair reading of [local patent rules used in other
Districts] make[s] clear that ‘affected by’ should be read to require some negative
impact.”
Although the meaning of “affected by” in the October 3 scheduling order is
ambiguous and was never discussed with the parties, the Court certainly did not intend
for it to allow Tristar to submit such a liberal or broad supplementation to its contentions
this late in the case, especially where the Court’s summary judgment rulings and
second claim construction did not render Tristar’s original contentions irrelevant.
Tristar’s construction of the “affected by” language, and its decision to more than double
its prior art references – while keeping all but one of its original references – is
unreasonable.
Choon’s interpretation of “affected by” is more reasonable and is fair.
This District does not have local patent rules. However, after reviewing other
districts’ local patent rules and case law, the Court adopts the standard used by the
Northern District of California, among other jurisdictions, to determine whether to strike
Tristar’s amended contentions:
“The [party seeking to amend] must demonstrate good cause, an inquiry
that considers first whether the [amending] party was diligent in amending
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its contentions and then whether the [opposing] party would suffer
prejudice if the [amendments] were [allowed]. If the [amending] party is
able to show diligence, the court may then consider the prejudice to the
[opposing] party. In considering good cause, the Court can examine such
factors as the relevance of the newly-discovered prior art and the difficulty
of locating the prior art.”
Fujifilm Corp. v. Motorola Mobility LLC, No. 12-03587, 2014 WL 491745, at *3 (N.D. Cal.
Feb. 5, 2014) (internal quotation marks and citations omitted).
B.
Whether Tristar Satisfies the Standard
Tristar argues it satisfies the good cause standard and that Choon’s would not be
prejudiced by allowing it to supplement. Tristar relies on three cases to support its
position. However, as Choon’s shows, each of those cases is distinguishable compared
to the facts and posture of this case.
The parties discuss the new prior art references based on the claim terms they
relate to. The Court addresses them the same way.
i. The ‘565 Patent: “opening on a front side”
In the second claim construction order, the Court construed “opening on a front
side” to mean “a space or groove on a forward facing side of each pin.” This was
Tristar’s proposed construction of the term.
In its brief, Tristar contended that this construction was consistent with the claim
language, the specification, and the Patent Trial and Appeal Board’s (“PTAB”)
construction. The Court agreed.
Because the Court’s construction of this term is consistent with the plain meaning
of the claim language, the specification, and the PTAB’s construction, Tristar was on
notice that the Court’s construction was a reasonable and likely construction of the term.
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Accordingly, Tristar’s delay in amending its contentions to include prior art related
to this construction of the term is unwarranted, and Tristar cannot show good cause to
now supplement its prior art references. See Fujifilm, 2014 WL 491745, at *3 (a party
seeking to amend must demonstrate good cause, which requires that it was diligent in
amending its contentions).
The Court strikes Tristar’s supplemental prior art references that were included
on the basis of the Court’s construction of the term “opening on a front side.”
ii. The ‘565 Patent: “relative special relationship”
In construing this claim term, the Court adopted a claim construction different
from that proposed by the parties. Although, as Choon’s states, the Court’s claim
construction is “quite close to Tristar’s proposed interpretation,” Tristar initially proposed
a different meaning for this term, but changed it during the second round of claim
construction.
The Court allows Tristar to maintain its two supplemental prior art references
related to the ability “to set a desired alignment” between two pins – i.e., the Boyer and
Wang references, [see Doc. 172, PgID 7576]. To the extent these references are
stricken on a different basis, Tristar may not rely on the references for the grounds in
which they were stricken.
iii. The ‘565 and ‘420 Patents: single-piece looms
Tristar claims that the Court’s denial of its motion for summary judgment on the
doctrine of equivalents makes supplemental references disclosing single-piece looms
highly relevant to invalidity.
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Choon’s says Tristar was well aware of its doctrine of equivalents position, and
that many of Tristar’s original contentions referenced prior art that are single-piece
looms.
Tristar says the fact that its original contentions included single-piece looms does
not make its newly cited references less relevant.
The Court agrees with Tristar’s statements. Because Choon’s infringement claim
under the doctrine of equivalents survived summary judgment, Tristar’s references
disclosing single-piece looms are relevant; and, Tristar’s newly-cited references are not
less relevant based on the fact that some of its prior art references in its original
contentions were single-piece looms.
However, Tristar’s response demonstrates that it knew single-piece looms were
relevant when it made its original contentions, and that it is taking this opportunity to
disclose additional single-piece looms that it should have disclosed originally, or
certainly sooner than now.
Tristar cannot establish good cause for its supplemental prior art references
disclosing single-piece looms.
The Court grants the motion to strike with regard to Tristar’s supplemental prior
art references disclosing single-piece looms.
iv. The ‘420 Patent: “rows of offset pins”
In a “final written decision” dated March 7, 2017, the PTAB adopted a
construction of “rows of offset pins” as “requiring the alignment of adjacent rows of pins
be staggered relative to each other.” During the second claim construction, Tristar
proposed this construction, Choon’s agreed to the construction, and the Court adopted
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the construction. Tristar now seeks to add prior art references it says disclose this
limitation.
Because Tristar was not diligent in seeking to amend on this ground, the Court
strikes the supplemental references Tristar sets forth on this basis. If Tristar wanted to
amend its contentions in this regard, it should have done so after the PTAB adopted the
relevant construction. That provided a basis for amendment. Waiting close to a year –
or even five months based on Tristar’s August 17 letter – was unjustified and
inexcusable. See O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
1361, 1367-68 (Fed. Cir. 2006) (upholding the district court’s denial of leave to amend
contentions upon finding that the party seeking to amend had not shown good cause
because it had not been diligent in seeking amendment, where it waited “over three
months after the . . . deposition that had provided the basis for the [amendment]”).
Tristar cannot establish good cause for waiting to make its supplemental prior art
disclosures referencing “rows of offset pins…” Id. Therefore, the Court strikes Tristar’s
supplemental prior art related to “rows of offset pins.”
IV.
CONCLUSION
The Court GRANTS IN PART and DENIES IN PART Choon’s motion to strike.
The Court STRIKES all of Tristar’s supplemental prior art references except for
the Boyer and Wang references to the extent Tristar relies on those references in
relation to the ability “to set a desired alignment” between two pins.
The new deadlines for “Steps” 12, 13 and 14 of the Second Amended Scheduling
Order are May 23, 2018, June 13, 2018 and June 29, 2018, respectively.
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The Court will hold an in-person status conference on May 31, 2018 at 3:30pm
to schedule dates through trial and discuss outstanding issues.
The Court does not believe a second round of dispositive motions is necessary.
If either side disagrees, that party must file a motion for leave to file a second summary
judgment motion, with a copy of the proposed summary judgment motion attached as
an exhibit, by May 18, 2018. No summary judgment motion exceeding 15 pages will be
allowed. The opposing party may respond to the motion for leave by May 25, 2018; that
party need not respond to the proposed summary judgment motion at that time.
IT IS ORDERED.
S/ Victoria A. Roberts
Victoria A. Roberts
United States District Judge
Dated: May 3, 2018
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