SME Steel Contractors et al v. Seismic Bracing et al
Filing
151
MEMORANDUM DECISION AND ORDER (1) Granting in Part and Denying in Part Plaintiffs' Motion for Second Amended Case Schedule 142 and (2) Denying 143 Defendants' Motion for entry of Order Setting Amended Case Schedule. Signed by Magistrate Judge Daphne A. Oberg on 8/14/20. (dla)
Case 2:17-cv-00702-RJS-DAO Document 151 Filed 08/14/20 PageID.4252 Page 1 of 7
___________________________________________________________________________
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
SME STEEL CONTRACTORS, INC., a Utah MEMORANDUM DECISION AND ORDER
corporation, and CORE-BRACE, LLC., a Utah (1) GRANTING IN PART AND DENYING
IN PART PLAINTIFFS’ MOTION FOR
limited liability company,
SECOND AMENDED CASE SCHEDULE
(DOC. NO. 142) AND (2) DENYING
Plaintiffs,
DEFENDANTS’ MOTION FOR ENTRY OF
vs.
ORDER SETTING AMENDED CASE
SCHEDULE
SEISMIC BRACING COMPANY, LLC, a
(DOC. NO. 143)
Utah limited liability company, and ANDREW
J. HINCHMAN, an individual,
Case No. 2:17-cv-00702-RJS-DAO
Defendants.
Judge Robert J. Shelby
Magistrate Judge Daphne A. Oberg
Before the court are (1) Plaintiffs SME Steel Contractors, Inc. and Core-Brace, LLC’s
Motion for Second Amended Case Schedule (“Pls.’ Mot.”) (Doc. No. 142) and (2) Defendants
Andrew J. Hinchman and Seismic Bracing Company, LLC’s Motion for Entry of Order Setting
Amended Case Schedule (“Defs.’ Mot.”) (Doc. No. 143). The court heard argument on the
motions on August 5, 2020 (Doc. No. 147).
Having considered the briefing and argument of both parties, the court (1) GRANTS IN
PART and DENIES IN PART Plaintiffs’ Motion for Second Amended Case Schedule (Doc. No.
142), and (2) DENIES Defendants’ Motion for Entry of Order Setting Amended Case Schedule
(Doc. No. 143) for the reasons set forth below.
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BACKGROUND
In this case, Plaintiffs SME Steel Contractors, Inc. and Core-Brace, LLC (together, “SME
Steel”) allege, among other things, that a former employee, Defendant Andrew J. Hinchman, and
his company, Defendant Seismic Bracing Company, LLC (together, “Seismic Bracing”),
improperly took SME Steel’s designs and marketing material and passed them off as their own.
(Second Am. Compl. ¶¶ 31, 39, Doc. No. 63.) SME Steel further alleges that Seismic Bracing
infringed on two patents related to steel manufacturing. (Id. ¶¶ 91–106.) After a lengthy process
of claim construction, the court issued its Memorandum Decision and Order Construing Claims
(Doc. No. 126) on March 24, 2020. On April 13, 2020, SME Steel filed a Motion for
Reconsideration of Memorandum Decision and Order Construing Claims, (Doc. No. 128). Upon
full consideration, the court issued a Memorandum Decision and Order Denying Plaintiff’s
Motion for Reconsideration, (Doc. No. 139).
After the court’s claim construction ruling, the court ordered the parties to submit a joint
amended scheduling order addressing the remaining deadlines in the case by July 24, 2020—or
to submit their own respective proposals if they could not reach an agreement. (Order Granting
Stipulated Mot. to Extend, Doc. No. 141.) The parties reached an agreement on deadlines for
supplementing pending summary judgment briefing. (Pls.’ Mot. 2, Doc. No.142.) 1 However,
they were unable to agree on whether additional fact discovery is warranted. Instead, they
submitted independent proposed schedules for the court’s consideration. (See id. at 2–3; Defs.’
Mot. 1–2, Doc. No. 143.)
Seismic Bracing filed its Supplemental Brief in Support of Defendants’ Motion for Partial
Summary Judgment (Doc. No. 148) on August 10, 2020. SME Steel’s response is due August
24, 2020. (See Doc. No. 150.)
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SME Steel asks the court to enter an amended scheduling order extending fact discovery
by sixty days from entry of the order. (Pls.’ Mot. 2–3, Doc. No. 142.) In support, SME Steel
explains that during the previous discovery period, it “focused its discovery efforts on claim
construction” and intentionally refrained from “completing all discovery to avoid multiple,
piecemeal depositions.” (Id. at 3–4.) Specifically, SME Steel states that it “avoided
propounding certain discovery requests focusing on the specific claim language at issue” and
“refrained from noticing the depositions of Defendants Seismic Bracing Company, LLC and
Andrew J. Hinchman to avoid eliciting testimony based on their respective” interpretations of
claim terms. (Id. at 5–6.) According to SME Steel, this approach was in the interest of
“efficiency and economy for all parties,” since it avoided multiple depositions with potentially
unnecessary testimony on the allegedly infringing devices. (See Pls. SME Steel Contractors, Inc.
and Core-Brace, LLC’s Opp’n to Defs.’ Mot. for Entry of Order Setting Am. Case Schedule 2 &
2 n.3, Doc. No. 146.) In advocating for reopening fact discovery, SME Steel relies on Local
Patent Rule 1.3(b), which allows a party to move to reopen fact discovery fourteen days after
entry of a ruling on claim construction. (Pls.’ Mot. 3–4, Doc. No. 142.) SME Steel seeks to
reopen fact discovery on both its patent infringement claims and its non-patent claims such as
unfair competition, copyright infringement, and defamation, among others. (Id. at 4.)
Seismic Bracing opposes reopening fact discovery on any of SME Steel’s claims.
Seismic Bracing points out that SME Steel conducted extensive fact discovery before the March
8, 2019 close of fact discovery. (Defs.’ Mot. 2, Doc. No. 143.) According to Seismic Bracing, if
SME Steel wanted fact discovery to extend after the claim construction process, it should have
proposed an earlier claim construction or proposed phased discovery. (Id. at 3–4.) Seismic
Bracing also argues Local Patent Rule 1.3(b) fails to support SME Steel’s position that the
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schedule contemplates reopening fact discovery on all claims. (Id. at 4.) Specifically, Seismic
Bracing complains that SME Steel has failed to specify the discovery needed or to identify its
scope, as required by Local Patent Rule 1.3(b). Seismic Bracing also contends no additional
discovery is necessary given the nature of the claim construction ruling. (Id. at 4–5.)
At the hearing, SME Steel clarified the scope of the discovery it seeks—specifically
asking to take five depositions, including the deposition of Mr. Hinchman and a 30(b)(6)
deposition of Seismic Bracing Company, LLC, and to serve five additional interrogatories and
five additional requests for production.
DISCUSSION
Local Patent Rule 1.3(b) contemplates the reopening of fact discovery after the entry of
the claim construction ruling. LPR 1.3(b). However, fact discovery can only be reopened upon
motion of a party explaining “why the claim construction ruling . . . necessitates further
discovery and identify[ing] the scope of such discovery.” Id. The court has discretion to allow
further discovery after the claim construction ruling. 2 See Bayer AG v. Biovail Corp., 279 F.3d
1340, 1349 (Fed. Cir. 2002) (“After construing the claims, the district court may assess the need
for further proceedings or discovery.”). Discovery after claim construction is not unusual. See,
e.g., Rembrandt Techs., LP v. Comcast of Fla. Pa., LP, 899 F.3d 1254, 1263 (Fed. Cir. 2018)
(reciting case history, to include discovery conducted after the court issued its claim construction
orders); Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1325 (Fed. Cir. 2016)
(outlining procedural history, including the district court’s order ending discovery two months
SME Steel relies upon Warner-Lambert Co. v. Purepac Pharm. Co. in support of its request for
post-claim-construction discovery, but the court fails to see its applicability to this issue. The
section SME Steel relies upon does nothing more than lay out the two-step analysis a court must
undertake in determining infringement. 503 F.3d 1254, 1259 (Fed. Cir. 2007).
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after its ruling on claim construction); Activision Publ’g., Inc. v. Gibson Guitar Corp., No. CV
08-1653-MRP, 2009 U.S. Dist. LEXIS 21931, at *5 (C.D. Cal. Feb. 26, 2009) (unpublished)
(observing that the court previously allowed post-claim construction discovery in the case). The
more unique twist in this case is that SME Steel seeks discovery related to non-patent causes of
action as well as discovery occasioned by the court’s claim construction ruling.
Discovery requests directed at applying the claims of the patent before the claim
construction ruling are improper. Tulip Computers Int’l B.V. v. Dell Computer Corp., 210
F.R.D. 100, 108 (D. Del. 2002). Of necessity, such requests must be made after the claim
construction ruling. Any discovery request relevant to a parties’ interpretation, propounded
before claim construction, would lead to confusing responses. Phillip M. Adams & Assocs., LLC
v. Dell, Inc., No. 1:05-cv-64 TS, 2007 U.S. Dist. LEXIS 3913, at *11–12 (D. Utah Jan. 11, 2007)
(unpublished) (holding that responses to requests for admission given before claim construction
ruling would be “confusing” as the respondent’s interpretations would “not necessarily govern
this action”). Discovery requests propounded after claim construction are less likely to create
confusion because they “do not call for an interpretation of claim language.” Thermapure, Inc.
v. Giertsen Co. of Ill., Inc., No. 10 C 4724, 2013 U.S. Dist. LEXIS 41086, at *12 (N.D. Ill. Mar.
25, 2013) (unpublished).
Considered in light of this legal backdrop, the court finds SME Steel adequately
explained “why the claims construction ruling necessitates further discovery,” as required by
Local Patent Rule 1.3(b). If SME Steel had attempted to depose a representative from Seismic
Bracing, or Mr. Hinchman himself, it would have either had to avoid significant relevant areas of
questioning or it would have elicited improper discovery. In the alternative, if SME Steel had
only asked about issues relevant to its non-patent claims in these depositions, then later requested
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additional depositions to address post-claim-construction issues, it would have acted contrary to
principles of economy and efficiency in litigation. Accordingly, the court finds SME Steel was
justified in waiting to conduct a limited amount of discovery on all claims and defenses until
after the claim construction ruling. This approach best avoids piecemeal, improper, or irrelevant
discovery.
Although SME Steel’s brief did not adequately define the scope of the discovery
requested, SME Steel remedied this omission at the hearing before this court. Specifically, SME
Steel requested the ability to complete up to five depositions, and to propound up to five
interrogatories and five requests for production—within a sixty-day deadline. This is sufficiently
limited as to be reasonable under the circumstances. Consequently, the court authorizes SME
Steel to conduct the following limited discovery related to all claims and defenses in this case: it
may take up to five seven-hour depositions, including a deposition of Mr. Hinchman and a
30(b)(6) deposition of Seismic Bracing Company, LLC, and propound five additional
interrogatories and five requests for production. To accommodate the additional discovery
ordered here, the court amends the following deadlines. All other deadlines remain unchanged.
Activity
Close of fact discovery
Expert witness disclosures of
parties with burden of proof
Expert witness disclosures of
parties on issues for which
the opposing party bears the
burden of proof
Close of expert discovery
Dispositive motion and
Daubert motion deadline
Deadline for filing a request
for a scheduling conference
with the district judge for the
purpose of setting a trial date
Utah Local Patent Rule
LOC. PATENT R. 1.3(b)
LOC. PATENT R. 5.1(b)
Due Date
October 13, 2020
November 12, 2020
LOC. PATENT R. 5.1(b)
December 12, 2020
LOC. PATENT R. 5.2
LOC. PATENT R. 6.1
January 11, 2021
February 10, 2021
February 16, 2021
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if no dispositive motions are
filed
At the time of argument on motions for summary judgment, the court will discuss the scheduling
of trial. Counsel should come to the hearing prepared to discuss possible trial dates. If the
schedule set forth herein is not extended, the parties can generally expect that trial will be set
sometime during the fourth quarter of 2021.
CONCLUSION
For these reasons, the court (1) GRANTS IN PART and DENIES IN PART Plaintiffs’
Motion for Second Amended Case Schedule (Doc. No. 142), and (2) DENIES Defendants’
Motion for Entry of Order Setting Amended Case Schedule (Doc. No. 143).
DATED this 14th day of August, 2020.
BY THE COURT:
Daphne A. Oberg
United States Magistrate Judge
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