inMusic Brands, Inc. v. Roland Corporation

Filing 236

Order: The Court ACCEPTS Magistrate Judge Almonds R&Rs. (ECF Nos. 215 , 216 .) inMusic's Motion to Exclude (ECF No. 182 ) and Motion for Partial Summary Judgment (ECF No. 177 ) are DENIED. Roland's Motion for Partial Summary Judgment (ECF No. 184 ) is DENIED. The Court RESERVES Roland's inequitable conduct counterclaim for determination after trial. (ECF No. 126 .). So Ordered by District Judge Mary S. McElroy on 3/29/2024. (Potter, Carrie)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF RHODE ISLAND
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inMUSIC BRANDS, INC.,
Plaintiff,
v.
ROLAND CORPORATION,
Defendant.

C.A. No. 17-cv-00010-MSM-LDA

ORDER
Mary S. McElroy, United States District Judge.
Pending before the Court are the parties’ objections to two Reports and
Recommendations (“R&Rs”) (ECF Nos. 215, 216) issued by Magistrate Judge Lincoln
D. Almond on Plaintiff’s Motion to Exclude (ECF No. 182), Plaintiff’s Motion for
Partial Summary Judgment (ECF No. 177), and Defendant’s Motion for Partial
Summary Judgment (ECF No. 184).
I.

BACKGROUND

This case is a patent dispute about electronic drum kits. The patents at issue
involve technology that allows electronic drums and cymbals to mimic the material
and sensation of the drums and cymbals on an acoustic drum kit. The plaintiff,
inMusic Brands, Inc. (“inMusic”) sues the defendant, Roland Corporation (“Roland”)
alleging infringement of three of its drum and cymbal patents: the ‘827 Patent for an
Electronic Percussion Instrument with Enhanced Playing Area; the ‘758 Patent for
an Electronic Hi-Hat Cymbal Controller; and the ‘724 Patent for a Removable
Electronic Drumhead for an Acoustic Drum. (ECF No. 106.) inMusic claims that

Roland’s PD-140DS V-Pad infringes the ‘827 Patent; that its VH-13-MG Hi-Hat
infringes the ‘758 Patent; and that its KD-A22 Kick Drum Converter infringes the
‘724 Patent. Id.
The lawsuit has a long procedural history before this Court. Most recently,
both parties filed motions for partial summary judgment. (ECF Nos. 177, 184.)
inMusic also filed a motion to exclude the non-infringement opinion of Roland’s expert
witness, Dr. Paul Lehrman. (ECF No. 182.) The motions were referred to Magistrate
Judge Almond. Magistrate Judge Almond issued two R&Rs recommending that all
the motions be denied. (ECF Nos. 215 & 216.) Both parties filed objections within
14 days. (ECF Nos. 221, 223, 224.) Because the objections to the R&Rs were timely
filed, this Court must conduct de novo review of those portions of the reports or
specific proposed findings or recommendations to which objection is made. 28 U.S.C.
§ 636(b)(1); see also Fed. R. Civ. P. 72. The Court may accept, reject, or modify, in
whole or in part, Magistrate Judge Almond’s recommendations. Id.
II.

DISCUSSION

After reviewing the entire file and record, the Court ACCEPTS Magistrate
Judge Almond’s R&Rs.
1.

inMusic’s Motion to Exclude Dr. Lehrman’s Opinion

Magistrate Judge Almond recommended that inMusic’s Motion to Exclude the
expert opinion of Dr. Lehrman be denied. (ECF No. 215.) inMusic moved to exclude
Dr. Lehrman’s opinion on two grounds: (1) that Dr. Lehrman did not prepare his
expert report as required by Fed. R. Civ. P. 26(a)(2)(B) and merely proofread and

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signed what defense counsel ghost-wrote for him; and (2) that Dr. Lehrman’s expert
opinion is unreliable under Fed. R. Evid. 702 because it is “the product of attorney
preparation” rather than scientific methods. (ECF No. 182.)
Regarding Rule 26, Magistrate Judge Almond found that “Dr. Lehrman was
sufficiently involved in the process to comply with the dictates of Rule 26(a)(2)(B) as
fleshed out in the Advisory Committee Notes.” (ECF No. 215 at 4.) The Court agrees.
Magistrate Judge Almond did not directly address the reliability requirements
of Fed. R. Evid. 702. Nevertheless, after reviewing the record, this Court finds that
Roland has met its burden to establish admissibility under that Rule.

See Fed. R.

Evid. 702; see also Bourjaily v. United States, 483 U.S. 171, 175-76 (1987) (for expert
witness testimony to be admitted, the party offering the testimony bears the burden
to establish admissibility under Rule 702). Because Roland met the dictates of both
Rule 26 and Rule 702, the Court ACCEPTS Magistrate Judge Almond’s
recommendation to deny the Motion to Exclude Dr. Lehrman’s expert opinion. (ECF
No. 215.)
2.

The Summary Judgment Motions

Both parties filed motions for partial summary judgment. (ECF Nos. 177, 184).
Magistrate Judge Almond recommended that the motions be denied. (ECF No. 216).
Both parties timely objected. (ECF Nos. 221, 224.) The Court has conducted de novo
review of those portions of the R&Rs to which objection is made. 28 U.S.C. § 636(b)(1);

see also Fed. R. Civ. P. 72.

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When considering direct infringement claims, the Court must consider
whether all of the claim limitations are present in an accused product, either literally
or by a substantial equivalent. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d
1314, 1318 (Fed. Cir. 2011). This enquiry is a question of fact not law, CommScope

Techs. LLC v. Dali Wireless Inc., 10 F.4th 1289, 1295 (Fed. Cir. 2021), and the Court
may only render an infringement determination on summary judgment “when no
reasonable jury could find that every limitation recited in the properly construed
claim either is or is not found in the accused device.” Innovention, 637 F.3d at 1319.
Because the record shows that it is genuinely disputed whether all of the claim
limitations of the ‘827 and ‘758 patents are present in the accused inventions,
summary judgment is not appropriate for either party considering the claims relating
to those patents (ECF No. 216.) Similar disputes persist considering the ‘724 patent
and the indirect infringement claims. Id.
inMusic also counterclaimed that the ‘758 patent is unenforceable because
inMusic engaged in inequitable conduct during the patent application process. (ECF
No. 126.) Inequitable conduct is an equitable defense to patent infringement that
bars enforcement of a patent in its entirety. Regeneron Pharms., Inc. v. Merus N.V.,
864 F.3d 1343, 1350 (Fed. Cir. 2017). Inequitable conduct claims require clear and
convincing evidence that a patent-holder withheld material information from the
Patent and Trademark Office with the intent to deceive. Therasense, Inc. v. Becton,

Dickinson & Co., 649 F.3d 1276, 1285, 1290 (Fed. Cir. 2011). Because the disputed
issues of fact underlying the issue of inequitable conduct are not jury questions, the

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issue being entirely equitable in nature, see Gardco Mfg., Inc. v. Herst Lighting Co. ,
820 F.2d 1209, 1212 (Fed. Cir. 1987), the Court RESERVES the inequitable conduct
claim to be resolved after trial. See Gen. Electro Music Corp. v. Samick Music Corp. ,
19 F.3d 1405, 1408 (Fed. Cir. 1994).
III.

CONCLUSION

The Court ACCEPTS Magistrate Judge Almond’s R&Rs. (ECF Nos. 215, 216.)
inMusic’s Motion to Exclude (ECF No. 182) and Motion for Partial Summary
Judgment (ECF No. 177) are DENIED.

Roland’s Motion for Partial Summary

Judgment (ECF No. 184) is DENIED. The Court RESERVES Roland’s inequitable
conduct counterclaim for determination after trial. (ECF No. 126.)

IT IS SO ORDERED.

_________________________________
Mary S. McElroy
United States District Judge
March 29, 2024

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