Bombardier Recreational Products, Inc et al v. Arctic Cat, Inc et al
Filing
788
MEMORANDUM OPINION AND ORDER 1. The Court OVERRULES Arctic Cat's objections 767 and and AFFIRMS the Order of the Magistrate Judge dated April 19, 2016 704 pertaining to Arctic Cat's motions [587, 614]. 2. The Court SUSTAINS in part a nd OVERRULES in part Bombardier's objections 737 , and AFFIRMS in part and REVERSES in part the Order of the Magistrate Judge dated April 19, 2016 704 pertaining to Bombardier's motions [591, 597]. Accordingly, Bombardier's Motion to Strike Portions of Defendants' Expert Reports 597 is GRANTED in part and DENIED in part as provided by the Magistrate Judge's order, except that the Court GRANTS Bombardier's motion with regard to David Karpik's opinion that the accused products do not satisfy the upper column limitation.(Written Opinion) Signed by Chief Judge John R. Tunheim on February 21, 2017. (DML)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
BOMBARDIER RECREATIONAL
PRODUCTS INC. and BRP U.S. INC.,
Plaintiffs/Counter Defendants,
v.
ARCTIC CAT INC. and ARCTIC CAT
SALES INC.,
Civil No. 12-2706 (JRT/LIB)
MEMORANDUM OPINION
AND ORDER ON OBJECTIONS TO
ORDER OF THE
MAGISTRATE JUDGE
Defendants/Counter Claimants.
Harry C. Marcus and Robert K. Goethals, LOCKE LORD LLP, Three
World Financial Center, New York, NY 10281, and Kevin D. Conneely,
STINSON LEONARD STREET LLP, 150 South Fifth Street, Suite 2300,
Minneapolis, MN 55402, for plaintiffs.
Annamarie A. Daley, JONES DAY, 90 South Seventh Street, Suite 5090,
Minneapolis, MN 55402, and Niall A. MacLeod, KUTAK ROCK LLP,
60 South Sixth Street, Suite 3400, Minneapolis, MN 55402, for defendants.
Plaintiffs Bombardier Recreational Products Inc. and BRP U.S. Inc. (collectively,
“Bombardier”) and Defendants Arctic Cat Inc. and Arctic Cat Sales Inc. (collectively,
“Arctic Cat”) both object to portions of the order issued by U.S. Magistrate Judge Leo I.
Brisbois. In that order, the Magistrate Judge granted in part and denied in part Arctic
Cat’s motion to compel, Arctic Cat’s motion to strike portions of Bombardier’s expert
reports, and Bombardier’s motion to strike portions of Arctic Cat’s expert reports. The
Magistrate Judge also denied Bombardier’s motion to transfer venue and motion to
compel additional discovery.
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Bombardier objects to the Magistrate Judge’s denial of its motion to transfer venue
and several aspects of the Magistrate Judge’s decision on its motion to strike. Arctic Cat
objects to the Magistrate Judge’s decision on several aspects of its motion to strike and its
motion to compel. Because the Court finds no good cause to allow Arctic Cat to provide
expert testimony essentially amending its claim chart, the Court will sustain
Bombardier’s objection and reverse the Magistrate Judge’s order with regard to David
Karpik’s upper column opinion. In all other respects, the Court will overrule the parties’
objections and affirm the order of the Magistrate Judge.
ANALYSIS
I.
STANDARD OF REVIEW
A district court’s review of a magistrate judge’s order on a nondispositive matter
is “extremely deferential.”
Roble v. Celestica Corp., 627 F. Supp. 2d 1008, 1014
(D. Minn. 2007); see also United States v. Raddatz, 447 U.S. 667, 673 (1980). The Court
will reverse such an order only if it is clearly erroneous or contrary to law. See 28 U.S.C.
§ 636(b)(1)(A); Fed. R. Civ. P. 72(a); D. Minn. LR 72.2(a)(3). For an order to be clearly
erroneous, the district court must have a “definite and firm conviction that a mistake has
been committed.” Lisdahl v. Mayo Found., 633 F.3d 712, 717 (8th Cir. 2011) (quoting
Anderson v. City of Bessemer City, 470 U.S. 564, 573 (1985)).
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II.
BOMBARDIER’S OBJECTIONS
A.
Motion to Transfer Venue
Bombardier objects to the Magistrate Judge’s denial of its motion to transfer venue
pursuant to 28 U.S.C. § 1404(b). Section 1404(b) provides for transfer from one division
to another within the same district, and Bombardier moved to transfer from the Sixth
Division to the Fourth Division so that trial could be held in the Minneapolis courthouse
rather than in Fergus Falls. The Magistrate Judge weighed the typical factors for a
motion to transfer venue: the convenience of the parties, the convenience of the
witnesses, and the interests of justice; but, also recognized that the burden is not as heavy
for an intra-district transfer. (Order at 27-28, Apr. 19, 2016, Docket No. 704.)
Bombardier objects to the Magistrate Judge’s finding that the convenience of the
witnesses weighed against transfer, arguing that the Magistrate Judge’s finding rested on
the erroneous conclusion that transfer would result in the loss of subpoena power over a
non-party, non-expert witness. (Bombardier’s Objs. at 3; see also Order at 30-31.)
Bombardier correctly asserts that the Court would in fact maintain subpoena power over
this witness because he resides in the same state, so long as he “would not incur
substantial expense.” Fed. R. Civ. P. 45(c)(1)(B)(ii). Furthermore, even if the witness
would incur substantial expense, “the party that served the subpoena may pay that
expense and the court can condition enforcement of the subpoena on such payment.”
Fed. R. Civ. P. 45 advisory committee’s note to 2013 amendment. Bombardier also
objects to the Magistrate Judge’s reliance on Bombardier’s “delay” in bringing the
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motion to transfer, arguing that it brought the motion when it became necessary, once it
became clear that trial was likely. (Bombardier’s Objs. at 5.)
But, even without relying on the reasoning Bombardier objects to, the Magistrate
Judge’s overall conclusion – that the convenience of parties, witnesses, and interests of
justice does not weigh in favor of transfer – was not clearly erroneous or contrary to law.
Each location would be inconvenient for a party and some of its witnesses. Bombardier
now also argues that the courtroom facilities and the accommodations available in the
Minneapolis area compared to those available in Fergus Falls support finding the interests
of justice require transfer. However, it appears that Bombardier did not make this
argument before the Magistrate Judge, and the Court finds it unconvincing. Accordingly,
the Court will overrule Bombardier’s objections to the Magistrate Judge’s denial of its
motion to transfer.
B.
Bombardier’s Motion to Strike
1.
Upper Column Admission
Bombardier objects to the Magistrate Judge’s denial of its motion to strike
portions of David Karpik’s expert report. First, Bombardier objects to the Magistrate
Judge’s decision not to strike Karpik’s opinion that the accused products do not satisfy
the “upper column” requirement. (Bombardier’s Objs. at 6-7.) The Magistrate Judge
noted that Arctic Cat admitted in its claim chart that the accused products had an upper
column prior to the issuance of the Court’s claim construction order, but denied the
motion to strike Karpik’s contrary finding because Karpik was required to apply the
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Court’s construction of “upper column,” regardless of Arctic Cat’s prior admissions.
(Order at 53-54.)
While experts are required to apply the definition found by the Court during claim
construction, see Ecolab USA Inc. v. Diversey, Inc., No. 12-1984, 2015 WL 2345264, at
*5 (D. Minn. May 14, 2015); Hochstein v. Microsoft Corp., No. 4-73071, 2009 WL
2022815, at *1 (E.D. Mich. July 7, 2009), Arctic Cat may not present or rely on expert
testimony that is contrary to its admissions. “Claim charts are ‘tools meant to lock-in
parties’ respective infringement positions and, based on the notice provided by the charts,
focus subsequent discovery efforts.’”
BreathableBaby, LLC v. Crown Crafts, Inc.,
No. 12-94, 2014 WL 3928526, at *5 (D. Minn. Aug. 12, 2014). Arctic Cat could amend
its claim chart if based on good cause as contemplated in the scheduling order. See
Bombardier Recreation Prods. Inc. v. Arctic Cat Inc., No. 12-2706, 2015 WL 8082522,
at *3 (D. Minn. Dec. 7, 2015).
“Good cause does not automatically exist to amend non-infringement charts
whenever a judge’s decision does not adopt a party’s hoped for claim-construction
positions.” BreathableBaby, LLC, 2014 WL 3928526, at *3. This is particularly true
here where the Court’s definition is similar to Arctic Cat’s proposed definition, and the
part of the Court’s construction that Karpik relies on was present in Arctic Cat’s proposed
definition. (Compare Defs.’ Opening Claim Construction Br. at 25, Dec. 19, 2014,
Docket No. 448 (proposing “an inverted U-shaped structure” as a definition for “upper
column”), with Decl. of Joseph A. Farco, Ex. H ¶¶ 101-02, Feb. 18, 2016, Docket
No. 604 (opining that the accused product was neither “u shaped” nor “inverted”)); see
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also BreathableBaby, LLC, 2014 WL 3928526, at *3 (finding no good cause in part
because the court giving terms their ordinary meanings was not an “unexpected result
. . ., especially where the position adopted by the judge is very similar to that advanced
by the opposing party”).
Arctic Cat has shown no good cause for allowing it to amend its claim chart, and
contradict on its prior admission. Accordingly, the Court will sustain Bombardier’s
objection and overrule the Magistrate Judge’s order with regard to Bombardier’s motion
to strike Karpik’s opinion contradicting Arctic Cat’s prior admission.
2.
Prior Art Objections
Bombardier objects to the Magistrate Judge’s denial of its request to strike
Karpik’s opinion that the upper column was admitted prior art for the ‘847/’848 patents.
(Bombardier’s Objs. at 10-11.)
Bombardier argues that the Magistrate Judge
misconstrued its motion by considering whether Arctic Cat had previously disclosed that
the upper column was prior art, rather than considering specifically whether Arctic Cat
had previously disclosed that it was admitted prior art – meaning that the ‘847/’848
patents themselves admitted that the upper column was found in prior art. (Id. at 10.)
However, Bombardier’s brief submission on this issue before the Magistrate Judge was
not as narrow as Bombardier’s current position. Previously, although Bombardier sought
to strike Karpik’s opinion “that the ‘upper column’ was admitted to be prior art in the
‘847/’848 Patents,” Bombardier only argued that Arctic Cat did not “assert that the
‘upper column’ was prior part” at any “point in any Prior Art Statement,” and that this
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assertion “only appeared for the first time in the Karpik Invalidity Report.” (Pl.’s Mem.
in Supp. of Mot. to Strike at 17-18, Feb. 18, 2016, Docket No. 599.) Bombardier cannot
now rely on arguments not made before the Magistrate Judge.
See Ridenour v.
Boehringer Ingelheim Pharm., Inc., 679 F.3d 1062, 1067 (8th Cir. 2012). Thus, the
Magistrate Judge did not clearly err in reading Bombardier’s motion more broadly than it
now asserts, and the Court finds no clear error in the Magistrate Judge’s rejection of
Bombardier’s motion.
(See Order at 43-45.)
Accordingly, the Court will overrule
Bombardier’s objection.
Bombardier also objects to the Magistrate Judge’s denial of its motion to strike
Arctic Cat’s expert testimony regarding new prior art references. (Bombardier’s Objs. at
11-12.) The Magistrate Judge found that all of the cited prior art references were used as
“generalized background information or background information related to the
knowledge a person of ordinary skill in the art would have.” (Order at 39.) Bombardier
argues that Arctic Cat was required to disclose all prior art under prior pretrial scheduling
orders and the Magistrate Judge committed legal error by denying the motion. The
Magistrate Judge cited several cases for its conclusion that undisclosed prior art
references did not necessarily have to be stricken where they were being used as
background or generalized information. (See Order at 36-37, 39 (citing Genentech, Inc.
v. Trs. of Univ. of Pa., No. C10-2037, 2012 WL 424985, at *3 (N.D. Cal. Feb. 9, 2012);
Brilliant Instruments, Inc. v. GuideTech, Inc., No. 9-5517, 2011 WL 900369, at *5-6
(N.D. Cal. Mar. 15, 2011)).) The Court finds no clear or legal error in the Magistrate
Judge’s analysis of the issue, and will overrule Bombardier’s objections.
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Finally, Bombardier challenges the Magistrate Judge’s denial of its motion to
strike Karpik’s new combinations of prior art which Bombardier argued violated the
pretrial scheduling order. (Bombardier’s Objs. at 14.) The Magistrate Judge found that
the pretrial scheduling order did not contain a strict requirement that all combinations be
disclosed. (Order at 42-43.) The Court finds no clear error in the Magistrate Judge’s
interpretation of the pretrial scheduling order; that order does not explicitly require all
combinations of prior art to be disclosed, and the Court is unpersuaded by Bombardier’s
citation to another case with a differently worded pretrial scheduling order.
(See
Bombardier’s Objs. at 14.) Additionally, as discussed by the Magistrate Judge, allowing
the new combinations did not prejudice Bombardier because it learned of the
combinations in time to depose Arctic Cat’s experts about them. (See Order at 43.)
Accordingly, the Court will overrule Bombardier’s objections on this issue.
III.
ARCTIC CAT’S OBJECTIONS
A.
Larson’s Initial Report
Arctic Cat objects to the Magistrate Judge’s denial of its motion to strike Robert
Larson’s initial expert report. (Arctic Cat’s Objs. at 3-7.) The Magistrate Judge rejected
Arctic Cat’s two supporting arguments that (1) Larson “changed the groupings of the
snowmobiles and the exemplar snowmobiles that represent each group,” and (2) he
“changed the measurement protocol by which he reviewed the Arctic Cat snowmobiles.”
(Order at 21-25.)
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First, the Magistrate Judge recognized that Larson divided the accused products
into different groupings than those in Bombardier’s infringement charts, and that Larson
selected two new exemplars from those accused products; however, the Magistrate Judge
rejected Arctic Cat’s argument that this reorganization of accused products constituted a
new infringement theory. (Id. at 22-24.) Arctic Cat does not highlight any legal error in
the Magistrate Judge’s analysis on this issue, citing only a prior order of the Magistrate
Judge. The Court finds the Magistrate Judge was aware of the prior decisions in this case
and did not clearly err in finding Larson’s reorganization into representative groupings
did not improperly change Bombardier’s infringement theory.
Second, the Magistrate Judge found Larson’s “addition of measurements without a
dummy in accordance with the ‘669 patent cannot be said to be a new infringement
theory.”
(Id. at 25.)
Again, Arctic Cat does not point out any clear error in the
Magistrate Judge’s analysis. Arctic Cat disputes the Magistrate Judge’s reliance on
Digital Reg of Texas, LLC v. Adobe Systems Inc., arguing that the court in that case
recognized that “[e]xpert reports may not introduce theories not set forth in the
infringement contentions.” No. 12-1971, 2014 WL 1653131, at *2 (N.D. Cal. Apr. 24,
2014). However, Arctic Cat does not provide any case law disputing the Magistrate
Judge’s conclusion that the addition of riderless measurements did not constitute a
change in infringement theory. The Court finds that the Magistrate Judge’s analysis is
not clearly erroneous or contrary to law, and will overrule Arctic Cat’s objections
regarding the Larson report.
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B.
Breen’s Expert Report
Arctic Cat objects to the Magistrate Judge’s denial of its motion to strike Kevin
Breen’s opinions regarding the “engine cradle” of the accused products. (Arctic Cat’s
Objs. at 7-8.) The Magistrate Judge found that Breen was required to apply the Court’s
definition of engine cradle, but also suggested that the difference between the initial
language in Bombardier’s infringement chart and the Court’s construction was not
significant. (Order at 19-21 (characterizing the dispute as the fact that Breen did “not
utiliz[e] the exact language of [Bombardier’s] initial Infringement contentions,” and that
they “differ[ed] somewhat”).) Arctic Cat argues that the Magistrate Judge’s decision was
inconsistent with a prior order, which prevented Arctic Cat from amending its claim chart
from admitting to denying that its accused products had an “apex,” in light of
Bombardier’s changing interpretation of the claim term. (Arctic Cat’s Objs. at 7-8; see
Order (“April 2014 Order”) at 2-10, Apr. 28, 2014, Docket No. 260.)
However, Bombardier did not change its position on whether any accused product
satisfies the “engine cradle” and related limitations, and therefore, the prior order is
distinguishable.
Instead, as discussed by the Magistrate Judge, Breen merely used
somewhat different language – the construction chosen by the Court – instead of the more
specific language used by Bombardier in its claim chart. (See Order at 19-21.) Thus, in
contrast to the motion to strike portions of Karpik’s opinion discussed above,
Bombardier’s expert is not contradicting a prior admission. The Court does not find this
conclusion is clearly erroneous or contrary to law, and therefore, the Court will overrule
Arctic Cat’s objection.
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C.
Gilbertson’s Deposition
Arctic Cat objects to the Magistrate Judge’s denial of its motion to compel one of
Bombardier’s expert witnesses, Gary Gilbertson, to answer questions in deposition
regarding the T/S Mod in relation to the ‘847 patent. (Arctic Cat’s Objs. at 8-10.) The
Magistrate Judge noted Gilbertson was not offering expert testimony regarding the ‘847
patent, and “[d]eposing him about topics related to an opinion he did not offer is outside
the scope of related expert discovery and would be improper.” (Order at 12.) Arctic Cat
argues that the Magistrate Judge erred in denying the motion to compel because counsel
may “instruct a deponent not to answer only when necessary to preserve a privilege, to
enforce a limitation ordered by the court, or to present a motion under Rule 30(d)(3).”
Fed. R. Civ. P. 30(c)(2). However, the Magistrate Judge did not clearly err in exercising
discretion and denying the motion to compel, finding that Arctic Cat’s attempt to gain
testimony from Gilbertson regarding a patent he was never asked to review was outside
of the scope of expert discovery, was improper, and would be of little use to Arctic Cat.
(Order at 11-13); see also Shukh v. Seagate Tech., LLC, 295 F.R.D. 228, 238 (D. Minn.
2013). Thus, the Court will overrule Arctic Cat’s objections on this issue.
D.
Reimbursement
Arctic Cat also objects to the Magistrate Judge’s denial of its request for
reimbursement of costs associated with resuming Claude Gelinas’ deposition. (Arctic
Cat’s Objs. at 10-12.) The Magistrate Judge denied Arctic Cat these costs briefly in a
footnote, (Order at 4 n.1); however, the parties fully briefed the issues, and Bombardier
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provided several reasons supporting denial of the motion, (see Pls.’ Mem. in Opp’n to
Defs.’ Mot. to Compel at 18-22, Feb. 25, 2016). 1 By denying the motion, the Magistrate
Judge implicitly found that Bombardier’s objections were substantially justified, and that
finding is not clearly erroneous.
It is not clear from the record presented to the
Magistrate Judge that Bombardier acted unreasonably, and thus, the Court finds the
Magistrate Judge did not clearly err in denying Arctic Cat’s motion seeking costs for
resuming Gelinas’ deposition and will overrule Arctic Cat’s objection.
E.
Embodiment of ‘669 Patent
Finally, Arctic Cat objects to the Magistrate Judge’s denial of its motion to strike
the opinions of Bombardier’s experts that the MY 2003-2015 REV snowmobiles
embodied the ‘669 patent. (Arctic Cat’s Objs. at 12-13.) Arctic Cat essentially argues
that Larson’s measurements supporting those embodiment opinions should have been
included in his initial report, rather than his rebuttal report; however, Arctic Cat does not
directly challenge the Magistrate Judge’s finding that Larson properly included the
analysis in his rebuttal report as a response to the obviousness argument in one of Arctic
Cat’s expert reports. (See Order at 26-27.) Thus, Arctic Cat has not pointed to any clear
or legal error in the Magistrate Judge’s operative reasoning, and the Court will overrule
its objection.
1
For example, Bombardier argued that the questions objected to implicated privilege and
protections regarding the Canadian proceedings, and that denying the motion would not be unjust
because Arctic Cat also contributed to the delay. (See Pls.’ Mem. in Opp’n to Defs.’ Mot. to
Compel at 20-22.)
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ORDER
Based on the foregoing, and all of the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
1.
The Court OVERRULES Arctic Cat’s objections [Docket No. 767] and
and AFFIRMS the Order of the Magistrate Judge dated April 19, 2016 [Docket No. 704]
pertaining to Arctic Cat’s motions [Docket Nos. 587 and 614].
2.
The Court SUSTAINS in part and OVERRULES in part Bombardier’s
objections [Docket No. 737], and AFFIRMS in part and REVERSES in part the Order
of the Magistrate Judge dated April 19, 2016 [Docket No. 704] pertaining to
Bombardier’s motions [Docket No. 591 and 597].
a.
Accordingly, Bombardier’s Motion to Strike Portions of Defendants’
Expert Reports [Docket No. 597] is GRANTED in part and DENIED in part as
provided by the Magistrate Judge’s order, except that the Court GRANTS
Bombardier’s motion with regard to David Karpik’s opinion that the accused
products do not satisfy the upper column limitation.
DATED: February 21, 2017
at Minneapolis, Minnesota.
____s/
____
JOHN R. TUNHEIM
Chief Judge
United States District Court
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