Candella, LLC et al v. Liown Electronics Co. Ltd. et al
MEMORANDUM OPINION AND ORDER: 1. To the extent the issues raised in Plaintiff's Motion for Summary Judgment [Doc. No. 501] have not been otherwise disposed of, Plaintiff's Motion is DENIED without prejudice; 2. The parties shall refile the ir summary judgment memoranda in accordance with the instructions and schedule provided in this Order; 3. Defendants' request for a hearing to consider the effect on the motions for summary judgment of Dr. Brown's substitution for Mr. Patto n [Doc. No. 739] is DENIED; 4. Plaintiff's Renewed Motion for Preliminary Injunction [Doc. No. 635] is DENIED without prejudice; 5. Plaintiff's request for leave to refile its motion for preliminary injunction [Doc. No. 737] is GRANTED; 6. The Court DEFERS ruling on Defendants' request for fees and costs [Doc. NO. 739]; and 7. Defendants' Daubert Motion Against Plaintiff's Expert Stuart Brown [Doc. No. 489] is GRANTED in part and DENIED without prejudice in part. (Written Opinion) Signed by Judge Susan Richard Nelson on 03/03/2017. (SMD)
UNITED STATES DISTRICT COURT
DISTRICT OF MINNESOTA
Luminara Worldwide, LLC,
Case No. 14-cv-03103 (SRN/FLN)
Liown Electronics Co. Ltd. et al.,
Shenzhen Liown Electronics Co. Ltd. et al.,
Luminara Worldwide, LLC, et al.,
Courtland C. Merrill, Daniel R. Hall, Joseph W. Anthony, Cory D. Olson, Steven C.
Kerbaugh, Steven M. Pincus, Anthony Ostlund Baer & Louwagie P.A., 90 South Seventh
Street, Suite 3600, Minneapolis, Minnesota 55402, Jon E. Wright, Sterne Kessler
Goldstein & Fox, 1100 New York Avenue Northwest, Suite 600, Washington, District of
Columbia 20005, and Ryan S. Dean, Fish & Tsang LLP, 2603 Main Street, Suite 1000,
Irvine, California 92614, for Plaintiff and Counterclaim Defendants.
Alan G. Carlson, Jonathan D. Carpenter, Peter Kohlhepp, Tara C. Norgard, Carlson
Caspers Vandenburgh Lindquist & Schuman P.A., 225 South Sixth Street, Suite 4200,
Minneapolis, Minnesota 55402, Joseph P. Reid, Patrick J. McKeever, Thomas N.
Millikan, Yun L. Lu, Perkins Coie LLP, 11988 El Camino Real, Suite 350, San Diego,
California 92130, and Kenneth J. Halpern, Perkins Coie LLP, 3150 Porter Drive, Palo
Alto, California 94304, for Defendants and Counterclaim Plaintiffs.
SUSAN RICHARD NELSON, United States District Judge
Before the Court are two matters related to Plaintiff Luminara Worldwide, LLC’s
decision to withdraw its expert Doug Patton, and to substitute Dr. Stuart Brown in
Patton’s place. The first, memorialized in a Joint Status Report [Doc. No. 718] submitted
by the parties on December 20, 2016, and by several briefs filed thereafter, seeks a ruling
from the Court as to (1) the timing and structure of refiling various summary judgment
memoranda; (2) whether a hearing will be held to reconsider the impacted summary
judgment motions; (3) whether Plaintiff will be allowed to refile its renewed motion for
preliminary injunction at this time; and (4) whether Plaintiff should bear the costs
associated with its decision to withdraw Patton as an expert. The second consists of
Defendants’ Daubert motion as to Dr. Brown. (See Defs.’ Daubert Mot. Against Pl.’s
Expert Stuart Brown [Doc. No. 489].) The Court’s decisions as to each matter are
ISSUES RELATED TO PENDING SUMMARY JUDGMENT MOTIONS
For reasons that have been discussed at length in several other orders of this Court,
Plaintiff Luminara Worldwide, LLC (“Luminara”) chose to withdraw its designation of
Patton as a non-reporting expert witness on November 22, 2016. (Nov. 22, 2016 Letter
to District Judge [Doc. No. 692].) See generally Luminara Worldwide, LLC v. Liown
Elecs. Co., No. 14-cv-3103 (SRN/FLN), 2016 WL 6774229 (D. Minn. Nov. 15, 2016).
On order of the Court, the parties met and conferred regarding the effect of Patton’s
withdrawal on several summary judgment motions then pending. (See Minutes [Doc. No.
708].) Ultimately, both sides agreed that parts of both Luminara’s and Defendants’
motion for summary judgment were impacted by the withdrawal, and would require
refiling. (See Joint Status Report at 2.) The parties were unable to fully agree on the
mechanics of that process, however. (See id.)
The initial point of contention relates to the extent to which the summary
judgment memoranda needed to be altered to reflect Patton’s replacement by Brown, and
the schedule by which those memoranda should be refiled. There appears to be general
agreement that Luminara will refile redlined memoranda in support of its motion for
summary judgment, and in opposition to Defendants’ motion, replacing any reference to
Patton’s testimony with citations to evidence provided by Dr. Brown. (See id. at 3, 5.)
The disagreement relates primarily to the timing for filing responses and reply briefs.
Having considered the parties’ submissions, the Court will order as follows:
1. Seven days after the date of this Order, Luminara will refile its redlined motion
for summary judgment of infringement.
2. Twenty-one days later, the parties will simultaneously file (1) Defendants’
opposition to Luminara’s motion for summary judgment; (2) Luminara’s
redlined opposition to Defendants’ motion for summary judgment of noninfringement; and (3) Luminara’s redlined opposition to Defendants’ motion
for summary judgment on trade secrets.
3. Fourteen days later, the parties will simultaneously file (1) Luminara’s reply on
its motion for summary judgment of infringement; (2) Defendants’ reply on
their motion for summary judgment of non-infringement; and (3) Defendants’
reply on their motion for summary judgment on trade secrets.
The parties are reminded that their briefing should be limited to those portions of the
motions for summary judgment that were deemed to be affected by Patton’s withdrawal.
(See id. at 1-2.)
The next two matters may be addressed summarily. The parties contest whether a
hearing is required to consider Dr. Brown’s evidence, and to address any inconsistencies
that may exist between positions he has taken at various points of this litigation. (See id.
at 5.) Similarly, there is disagreement as to whether Luminara should be allowed to refile
its motion for preliminary injunction at this time, or whether it must wait until after the
motions for summary judgment are disposed of. (See id. at 4, 5-6.) Having considered
the arguments, the Court concludes that no new hearing is required, and that there is no
good reason to require Luminara to delay refiling its preliminary injunction motion.
Accordingly, Defendants’ requests as to both issues are denied.
The fourth and most heavily contested matter presented by the parties has to do
with who must bear the costs associated with rebriefing the summary judgment motions.
Defendants argue that case law and justice demand that as the party responsible for
Patton’s withdrawal, Luminara must pay all costs and fees associated with at least (1)
preparing and taking Dr. Brown’s deposition regarding his new opinions; and (2)
rebriefing the affected summary judgment motions. (See Defs.’ Mem. re Patton [Doc.
No. 739] at 5-11.) Luminara responds that it should not be assessed costs because its
decision to withdraw Patton as an expert has only minimal effect on the motions pending
before the Court, and because it acted in good faith. (See Pl.’s Mem. re Patton [Doc. No.
737] at 13-15.) In addition, Luminara argues that it has previously had to bear costs
associated with various tactical decisions made by Defendants, and that it would thus be
inequitable to require it to pay when Defendants have not been required to do so. (See id.
The parties each raise compelling arguments that require the Court’s careful
consideration. To facilitate that review, the Court chooses to defer ruling on the issue of
costs until a later time. Accordingly, Defendants’ motion on the matter is deferred.
DEFENDANTS’ DAUBERT MOTION REGARDING DR. BROWN
Defendants move to exclude the opinion of Luminara’s patent expert, Dr. Brown,
asserting that his opinion fails to satisfy Fed. R. Evid. 702 and must be excluded pursuant
to Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 589 (1993). (See Defs.’ Mem. in
Supp. of Daubert Mot. re Brown [Doc. No. 491] (“Defs.’ Brown Mem.”) at 2.)
Defendants argue that the deficiencies in Brown’s report are so significant that they
implicate his entire opinion. (Id.) For example, they contend that Brown’s invalidity
opinions based on obviousness fail to identify the specific combinations that render a
claim obvious. (Id. at 4.) Comparing their own expert’s report to Brown’s, Defendants
assert that they, in contrast, disclose the specific combinations and provide citations to
support a combination of references, including the reasons for the motivation to combine,
where applicable. (May 20, 2016 Hr’g Tr. [Doc. No. 576] at 127-28.) In addition,
Defendants note that for some dependent claims, they are unable to determine whether
Brown relies on a theory of obviousness or anticipation in reaching his conclusions.
(Defs.’ Brown Mem. at 6.) Defendants also fault Dr. Brown for failing to provide claim
charts as part of his report, while Defendants’ expert did, and as Dr. Brown did as part of
the inter partes review process and in support of Plaintiff’s second preliminary injunction
motion. (May 20, 2016 Hr’g Tr. at 128, 136.)
Should the Court decline to strike Brown’s opinion in its entirety, Defendants
request alternative rulings. First, they alternatively request that Brown be ordered to
produce new reports and provide additional deposition testimony, particularly in light of
the consolidation of this case with Luminara Worldwide, LLC v. RAZ Imports, Inc., 15cv-3028 (SRN/FLN) and RAZ Imports, Inc. v. Luminara Worldwide, LLC, 15-cv-4024
(SRN/FLN) (“the RAZ actions”).
(See Defs.’ Brown Mem. at 2.)
As a second
alternative, Defendants ask that Brown’s testimony be limited to the opinions and the
bases that are specifically disclosed in his report. (Defs.’ Reply [Doc. No. 550] at 17.)
In response, Luminara contends that Defendants have falsely characterized
Brown’s testimony and that his opinions are sufficiently supported so as to be admissible
at trial. (Pl.’s Opp’n to Brown Mem. [Doc. No. 531] at 2, 19, 21.)
The Court finds that several events warrant granting Defendants’ alternative
request for the production of a new report and additional deposition testimony: (1) the
consolidation of this case with the RAZ actions; (2) Luminara’s decision to withdraw its
expert Doug Patton and substitute Dr. Brown’s opinion; and (3) recent decisions by the
U.S. Patent & Trademark Office’s Patent & Trial Appeal Board (“PTAB”) regarding the
patents at issue. The Court believes that the combination of these events requires Dr.
Brown to augment his opinion with a new report and provide some additional deposition
testimony. Defendants’ motion is therefore granted in part, as to the requirement for a
new report and additional deposition testimony, and denied without prejudice in part, as
to whether the requirements of Rule 702 and Daubert ultimately preclude Dr. Brown’s
In drafting his new report, Dr. Brown should give consideration to
Defendants’ concerns regarding specificity and clarity, several of which the Court shares.
As discussed previously, Defendants may take an additional deposition of Dr. Brown and
provide an updated report from their opposing expert or experts, limited to any new
opinions or information provided by Dr. Brown. The parties shall meet and confer
regarding the schedule for the production of these reports and the deposition scheduling.
Based on the foregoing, and all the files, records, and proceedings herein, IT IS
HEREBY ORDERED that:
To the extent the issues raised in Plaintiff’s Motion for Summary Judgment
[Doc. No. 501] have not been otherwise disposed of, Plaintiff’s Motion is
DENIED without prejudice;
The parties shall refile their summary judgment memoranda in accordance
with the instructions and schedule provided in this Order;
Defendants’ request for a hearing to consider the effect on the motions for
summary judgment of Dr. Brown’s substitution for Mr. Patton [Doc. No.
739] is DENIED;
Plaintiff’s Renewed Motion for Preliminary Injunction [Doc. No. 635] is
DENIED without prejudice;
Plaintiff’s request for leave to refile its motion for preliminary injunction
[Doc. No. 737] is GRANTED;
The Court DEFERS ruling on Defendants’ request for fees and costs [Doc.
NO. 739]; and
Defendants’ Daubert Motion Against Plaintiff’s Expert Stuart Brown [Doc.
No. 489] is GRANTED in part and DENIED without prejudice in part.
Dated: March 3, 2017
s/Susan Richard Nelson
SUSAN RICHARD NELSON
United States District Judge
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