Briese Lichttechnik Verttriebs GmbH v. Langton et al
Filing
306
MEMORANDUM ORDER denying 232 Motion for Summary Judgment; denying 246 Motion to Dismiss for Lack of Jurisdiction; denying 254 Motion to Strik ; granting 260 Motion to Strike; denying 276 Motion to Strike. For the foregoing reasons, Defenda nts' motions to strike portions of Mr. Krichever's Declarations, the Plaintiffs' Reply and Exhibit B to the Munoz Declaration are denied for the reasons indicated herein. Plaintiffs' motion to strike Mr. Ortiz's Declaration and its Exhibit A is granted in part. Plaintiffs' request for an award of costs and expenses in connection with the motion is denied. Plaintiffs' motion for summary judgment of willful infringement is denied and Mr. Ortiz's motion to dismiss the Complaint for lack of personal jurisdiction is denied. This Memorandum Order resolves docket entry numbers 232, 246, 254, 260, and 276. (Signed by Judge Laura Taylor Swain on 11/8/2012) (mro)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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BRIESE LICHTTECHNIK VERTRIEBS
GmbH and HANS-WERNER BRIESE,
Plaintiffs,
No. 09 Civ. 9790 (LTS)(MHD)
-v-
BRENT LANGTON, B2PRO,
KEY LIGHTING, INC. and SERGIO ORTIZ,
Defendants.
-------------------------------------------------------x
MEMORANDUM ORDER
Plaintiffs Hans-Werner Briese ("Mr. Briese") and Briese Lichttechnik Vertriebs
GmbH (the "Briese Company") (collectively, "Plaintiffs") bring this action against Brent
Langton ("Mr. Langton"), B2Pro, Key Lighting, Inc. ("Key Lighting") and Sergio Ortiz
(collectively, "Defendants") alleging that Defendants have infringed U.S. Patent No. 5,841,146
("the' 146 patent"), which pertains to an umbrella-shaped light reflector for use in photography
and videography. The Court has subject matter jurisdiction of this action pursuant to 28 U.S.C.
§§ 1331 and 1338(a).
Plaintiffs move for summary judgment ofwillful infringement of Claim 1 of the
'146 patent (docket entry no. 232). Defendants oppose the motion. l Four other motions are
currently pending before the Court. Defendants move to strike portions of the February 27,
2012, Declaration of Plaintiffs' expert, Mark Krichever (docket entry no. 254), and Plaintiffs
move to strike the March 15, 2012, Declaration of Sergio Ortiz and its Exhibit A (docket entry
At times in the opposition papers, Defendants also seem to be making a cross-motion
for summary judgment. To the extent this was the Defendants' intention, the cross
motion is unsubstantiated and is denied.
BRIESE Sl;MMARY JUDGMENT, WI'D
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no. 260). Defendants also move to strike portions ofMr. Krichever's March 27, 2012,
Declaration, portions of the Plaintiffs' Reply in support of their motion for summary judgment
and Exhibit B to the Munoz Reply Declaration (docket entry no. 276). Finally, Mr. Ortiz renews
his motion to dismiss the Complaint as against him for lack of personal jurisdiction (docket entry
no. 246).
The Court has reviewed thoroughly the parties' submissions and arguments. For
the following reasons, Defendants' motions to strike portions ofMr. Krichever's Declarations
and portions of Plaintiffs' Reply are denied and Plaintiffs' motion to strike Mr. Ortiz's
Declaration and its Exhibit A is granted in part. Plaintiffs' motion for summary judgment of
willful infringement as to Claim 1 of the '146 patent is denied and Defendants' motion to
dismiss for lack of personal jurisdiction over Mr. Ortiz is also denied.
BACKGROUND
The following facts are undisputed except as otherwise noted. 2 Mr. Briese filed
the '146 patent in the United States on April 15, 1997. The '146 patent consists of Claim One,
an independent claim, and multiple dependent claims. Independent Claim 1 reads as follows
(numerical references omitted):
An umbrella reflector, comprising:
a bearing body into which a tubular carrying means is inserted so that said
tubular carrying means is displaceably held within said bearing body;
2
Facts recited as undisputed are identified as such in the parties' statements of facts
pursuant to Local Civil Rule 56.1 or drawn from evidence as to which there is no
non-conclusory, contrary factual proffer. Citations to the parties' respective
S.D.N.Y. Local Civil Rule 56.1 statements ("Defs' 56.1 Stmt.") and responses
thereto ("PIs' 56.1 Stmt") incorporate by reference citations to the underlying
evidentiary submissions.
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a ring of articulated joints arranged on said bearing body and to which umbrella
stretchers are hingedly attached, a reflecting umbrella covering fastened to
umbrella stretchers;
a sliding means being displaceable on said tubular carrying means
a ring oftoggle joints arranged on said sliding means to which expanding
stretchers are mounted, the end of expanding stretchers being secured to
umbrella stretchers by articulated expanding joints, said expanding stretchers
being dimensioned so that when opening the reflectors, said sliding means is
displaceable to a point past the plane of said articulated expanding joints, where
the resilient restoring forces provide an arrestment holding the reflector in an
open position, and
an element emitting electromagnetic or acoustic waves which is arranged
at the end of said tubular carrying means facing the interior of said umbrella
reflector so that by displacing said tubular carrying means within said bearing
body said element is moved into different positions in relation to the opened
reflector.
('146 patent, col. 4:54-5: 14).
Mr. Langton operated a photographic equipment rental business called Briese
USA and bought original Briese photographic equipment. On August 27, 1999, Mr. Briese
filed suit against another company in which the infringement of the instant '146 patent was
asserted. Hans-Werner Briese v. Profoto A.B. et ai., No. 99-08727 NM (BQRx) (C.D. Cal.
1999) (the "Profoto suit"). Plaintiffs allege that Mr. Langton assisted Mr. Briese, who resides
in Germany, with the case. (PIs' 56.1 Stmt ~~ 37-38). When the Profoto case settled, Plaintiffs
allege, Mr. Langton was aware ofthe details of the settlement agreement, in which Profoto
admitted the validity of the '146 patent. (Pis' 56.1 Stmt ~ 39). Defendants contend that there
were questions raised at that time about the patent's validity. (Defs' 56.1 Stmt ~ 39).
The business relationship between the parties ended in 2007 and Plaintiffs
stopped selling their products to Mr. Langton. Mr. Langton then filed a trademark infringement
suit against ::vIr. Briese and the Briese Company, seeking to use the name "Briese" for his
BRIESE SLMtvlARY JUDG'1ENT.WPD
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products. Mr. Briese counterclaimed, winning a preliminary injunction against Mr. Langton.
Briese USA, Inc. v. Briese Lichttechnik Vertriebs GmbH, No. 07-2735 GHK (CWx) (CD. Cal
2008). The parties entered into a Mutual Release and Settlement Agreement in January of
2011. (Defs' 56.1 Stmt ~ 40). Mr. Langton changed the name of his company from Briese
USA to B2Pro (a d/b/a of Key Lighting), but Plaintiffs allege that B2Pro infringed and
continues to infringe the '146 patent.
Since this suit commenced, Defendants and their counsel have engaged in various
forms of pretrial misconduct, resulting in Judge Dolinger' s January 14, 2011, Order that the
following facts are established and admissible:
1. B2PRo is the successor corporation to BrieseUSA and
BrieseNY.
2. B2Pro arranged for the design and manufacture of a
series of reflector umbrellas after being in possession of
the patented Briese reflector umbrellas.
3. B2Pro has deliberately failed to tum over to plaintiffs,
as legally required, all documents reflecting defendants'
claimed independent research for and design of their
allegedly infringing reflector umbrellas and their
component parts.
4. B2Pro has deliberately failed to tum over to plaintiffs,
as legally required, all documents reflecting defendants'
marketing and advertising of their allegedly infringing
reflector umbrellas and all documents reflecting revenues
from the rental of those allegedly infringing umbrellas.
5. Defendants appropriated without authorization the
company name ofthe plaintiffs in an attempt to
misappropriate the goodwill of the company.
(Memorandum & Order of Mag. J. Dolinger, Jan. 14,2011, making findings of misconduct,
docket entry no. 162, at 33-34 ("January 14, 2011, Order")). Judge Dolinger also held that:
"plaintiffs will be entitled to an instruction at trial that the failure of the defendants to provide
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required documents may permit an inference that defendants deliberately infringed the
plaintiffs' patents in question and that they earned substantial revenues as a consequence."
(Id. at 34).
The accused infringing devices are the B2Pro adjustable focus umbrella reflectors
in the following sizes: 40 Focus Umbrella Reflectors; 77 Focus Umbrella Reflectors; 90 Focus
Umbrella Reflectors; 100 Focus Umbrella Reflectors; 115 Focus Umbrella Reflectors; 125 Focus
Umbrella Reflectors; 140 Focus Umbrella Reflectors; 180 Focus Umbrella Reflectors; 220 Focus
Umbrella Reflectors and 330 Focus Umbrella Reflectors. (PIs' Stmt.
,r 5).
As part of the instant
motion practice, Plaintiffs' expeli witness, Mark Krichever, performed a detailed infringement
analysis of the alleged infringing umbrella reflectors from the perspective of one skilled in the
art at the time ofthe invention. ("Krichever Decl., Feb. 27, 20l2"). Using the Court's claim
construction, the constructions agreed to by the parties and adopted by the Court, and the
ordinary and customary meaning for the remaining terms of Claim 1, Mr. Krichever concluded
that Defendants' umbrella reflectors literally contained each and every element of Claim 1 of the
'146 patent. (Krichever Decl., Feb. 27, 2012, ~~ 37-38). To perform his analysis, Mr. Krichever
used photographs bates stamped BH008923-8933 and BH008958-9036 and reviewed B2Pro's
descriptions of the allegedly infringing umbrella reflectors on B2Pro's website,
..www.B2Pro.com... (PI. Mot. for Sum. Judgment at 13-14).
DISCUSSION]
Where, as here "a decision on the motion[ s] to strike may affect [Plaintiffs '] ability to
prevail on summary judgment, it is appropriate to consider [the motions to strike] prior to [the
When "deciding issues in [a] patent case, district court applies law of circuit in
which it sits to nonpatent issues and law of Federal Circuit to issues of substantive
patent law." In re Omeprazole Patent Litigation, 490 F.Supp.2d 381 (S.D.N.Y.
2007).
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Plaintiffs' motion for] summary judgment." Rund v. JPMorgan Chase Group Long Term
Disability Plan, 10 Civ. 5284,2012 WL 1108003, at *1 (S.D.N.Y. Mar. 30,2012).
Defendants' Motion to Strike Mark Krichever's First Declaration
Defendants move to strike paragraphs 19 and 26-37 of the February 27, 2012,
Krichever Declaration under Federal Rules of Civil Procedure 16(f) and 30(b)(6) and Federal
Rule of Evidence 702. Defendants argue principally that Mr. Krichever's qualifications are
insufficient, that the factual support for his Declaration is inadequate because he examined
photographs of the accused device rather than the device itself, and that Mr. Krichever's
statement, that Defendants' allegedly infringing conduct manifested in "making, using and
renting" the accused devices, is inconsistent with Plaintiffs' previously-disclosed Patent
Infringement Contentions, which characterized the infringing conduct as "intentional copying,
rental, sale and offer for sale of the infringing devices ... "4 (Krichever's Decl., Feb. 27, 2012,
~
19). Defendants further contend that the inability of Plaintiffs' Rule 30(b)(6) deposition
witnesses to supply information in response to questions regarding the factual basis of, inter alia,
Plaintiffs' contentions that Defendants sold or rented the accused devices precludes Plaintiffs
from seeking to prove such activity. None of these arguments is availing.
Federal Rule of Evidence 702 provides that:
...•
A witness who is qualified as an expert by knowledge, skill. experience, training,
or education, may testify in the f01111 of an opinion or otherwise, if: (a) the
expert's scientific, technicaL or other specialized knowledge will help the trier of
fact to understand the evidence or to determine a fact in issue; (b) the testimony is
based on sufficient facts or data, (c) the testimony is the product of reliable
principles and methods; and (d) the expert has reliably applied the principles and
_ - _ __ _ _ __ ....
4
The Patent Infringement Contentions to which both parties refer, dated April 30,
2010, have not been filed on ECF. The parties are directed to file these Infringement
Contentions and any responses on ECF promptly upon receipt of this Order.
BRIESE
...
...
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methods to the facts of the case.
Fed. R. Evid. 702. In patent cases, expert testimony is "useful to a court for a variety of
purposes, such as to provide background on the technology at issue, to explain how an invention
works. to ensure that the court's understanding of the technical aspects of the patent is consistent
with that of a person of skill in the art, or to establish that a particular term in the patent or the
prior art has a particular meaning in the pertinent field." Phillips v. A WH Corp., 415 F .3d 1303,
1318 (Fed Cir. 2005). According to his Declaration, Mr. Krichever has a Master's degree in
Opto-Mechanical Engineering and has more than 40 years of experience working as an opto
mechanical engineer. Defendants' contention that Mr. Krichever is unqualified to opine centers
on the lack of evidence that he has ever handled physically an umbrella reflector. Mr.
Krichever's academic and experiential engineering background is, however, sufficient to qualify
him as an expert in the engineering issues that are in dispute in this litigation.
Moreover, an expert is not required to personally inspect the accused device to
render valid opinions. Federal Rule of Evidence 703 (which governs the basis of opinion
testimony by expelis) provides that "[an] expert may base an opinion on facts or data in the case
that the expert has been made aware of or personally observed." Fed. R. Evid. 703 (emphasis
added). "[T]he Federal Rules of Evidence establish that an expert need not have obtained the
basis for his opinion from persona] perception." Monsanto Co. v. David, 516 F.3d 1009, 1015
(Fed. Cir. 2008). Mr. Krichever's Declaration proffers that he read and examined a substantial
amount of peliinent material (including the' 146 patent, the file history, deposition transcripts
and the B2Pro website), and his opinions are supported by his cited evidence.
Mr Krichever's reference to "making, using and renting" the accused devices is
not inconsistent with the Plaintiffs' Infringement Contentions, which state that Defendants
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infringed the patent by the "intentional copying, rental, sale and offer for sale of the infringing
devices." (Krichever's Decl., Feb. 27, 2012, ~ 19). Clearly, the alleged copies of the umbrella
reflectors were "made" at some point and it can be no surprise to Defendants, who offer their
devices to the public on a website with pictures and descriptions of how the devices operate, that
Plaintiffs are complaining of "use," which is a way to characterize the rental and/or sales of the
accused devices. Mr. KTichever's reference to a 125 model accused device is supported by the
B2Pro website screen shots that Plaintiff has offered. The question of whether or not B2Pro
actually rents or sells this 125 focus umbrella reflector constitutes a disputed issue of fact.
Finally, Defendants' contention that Judge Dolinger's remark, in the January 24,
2011, Order, that Plaintiffs are bound by the 30(b)(6) witnesses' disclaimers of personal
knowledge in response to "specific factual questions," precludes Plaintiffs from seeking to prove
that Defendants sold or rented the accused devices is unfounded. (Memorandum & Order of
Mag. J. Dolinger, January 24,2011, partially granting Defendants' motion to compel, docket
entry no. 167 ("January 24, 2011, Order")). Defendants have selectively quoted only a portion
of the January 24, 2011, Order dealing with this issue. Reading the whole of the Order
demonstrates that, rather than granting Defendants' request to preclude parts of Plaintiffs' case
based upon allegedly non-responsive answers, Judge Dolinger denied Defendants' requests for
sanctions, finding that, "to the extent that [the 30(b)(6) witnesses] were asked properly phrased
and permissible questions about factual details, they were able to provide responsive testimony."
(January 24,2011, Order, at 17). Judge Dolinger found that the only questions that the 30(b)(6)
witnesses were unable to answer were questions that were overly general, vague or improperly
calling for legal conclusions, and that the "failure of defendants' counsel to focus on specific
purely factual details does not demonstrate that the witnesses failed to fulfill their required roles
BRIESE SUMMARY lUDGMENT.WPD
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under Rule 30(b)( 6)." (Id. at 17). Accordingly, the motion to strike portions of the February 27,
2012, Declaration ofMr. Krichever is denied.
Plaintiffs' Motion to Strike Sergio 011iz's Declaration
Plaintiffs move to strike the March 15,2012, Declaration of Sergio Ortiz and its
Exhibit A, seeking costs and expenses, including reasonable attorneys' fees pursuant to Federal
Rules of Civil Procedure 37(c)(I) and 56(c)(4) and Judge Dolinger's January 14,2011, Order.
Based on his personal experience and background with the B2Pro umbrella reflectors, Mr. Ortiz
testi fies that three elements of Claim 1 of the' 146 patent do not appear in the B2Pro umbrella
reflectors. Plaintiffs contend that Mr. 01tiz is offering expert testimony, which was not properly
disclosed, and that Defendants are using Mr. Ortiz's Declaration to "sandbag" them.
Federal Rule of Evidence 701 allows a lay witness to testify to opinions which are:
(a) rationally based on the witness's perception; (b) helpful
to clearly understanding the witness's testimony or to
determining a fact in issue; and (c) not based on scientific,
technical, or other specialized knowledge within the scope
of Rule 702.
Fed. R. Evid. 70l. Witness testimony is excluded pursuant to Rule 701 when the witness's
testimony is "based on the witness's scientific, technical, or specialized knowledge rather than
observation." New York v. Solvent Chemical Co., Inc., 453 Fed. App'x 42, 47 (2d Cir. 2011).
In patent cases, the testimony relating to the interpretation and application of patent claims by
persons of ordinary skill in the art generally involves "scientific, technical or specialized
knowledge," as is the case here, and thus, requires expert testimony. See ~ Markman v.
Westview Instruments, Inc., 52 F.3d 967,979 (Fed Cir. 1995) (describing how courts should
"ascertain the meaning of claims" by considering the claims themselves, "the specification, [ ]
I3R:ESESUMMARY JUDGME1-
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