Douglas Dynamics, LLC v. Meyer Products LLC

Filing 75

ORDER granting in part and denying in part 69 Motion for Reconsideration; granting in part and denying in part 70 Motion for Leave to Amend Infringement Contentions; granting 72 Motion for Leave to File Reply. Signed by District Judge James D. Peterson on 5/15/17. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

DOUGLAS DYNAMICS, LLC,
Plaintiff,

ORDER

v.

14-cv-886-jdp

MEYER PRODUCTS LLC,
Defendant.

Two motions by plaintiff Douglas Dynamics, LLC, are before the court. Both motions
involve the parties’ positions on claim construction, particularly of the term “trunnion.” But
the motions present separate issues, so we’ll address them one at a time.

DKT. 69
Douglas Dynamics seeks reconsideration or clarification of the court’s opinion and
order on the scope of estoppel under 35 U.S.C. § 315(e). Dkt. 69. (The court’s opinion is
Dkt. 68.) I’ll deny the motion for reconsideration, but I’ll provide clarification.
Douglas Dynamics contends that one of the principles underlying the court’s analysis
was “squarely rejected” by Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016). That
is a stretch. Cuozzo held that a PTAB decision whether to institute review is not judicially
reviewable, based on the plain statement in § 314(d). Nothing in Cuozzo undermines the notion
implicit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir.
2016), and expressed in Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-5501, 2017
WL 235048 (N.D. Cal. Jan. 19, 2017), that a defendant is entitled to meaningful judicial
review of every ground of invalidity presented to the PTAB, and that a PTAB decision declining

to institute review on an invalidity ground is not meaningful judicial review. I expressed my
misgivings about the Shaw approach, but because the Federal Circuit has made its views clear,
I will follow it. (And I agree with Meyer Products that if Cuozzo were decisive on this point,
Douglas Dynamics should have made this argument its original motion, not in a motion for
reconsideration.)
I have more sympathy for Douglas Dynamics’s request for clarification (although again,
Douglas Dynamics should have presented this issue more clearly in its original motion).
Douglas Dynamics essentially asks the court to explain what a “ground for invalidity” is.
Douglas Dynamics contends that a “ground” includes not only the challenged claim and the
putatively invalidating references, but “the theories and arguments that were, in fact, presented
in the IPR petition.” Dkt. 69, at 5. Applied to an example from this case, the petitioned but
non-instituted ground that Meyer Products has preserved is not just “claim 6 is anticipated by
Keeler,” but Meyer Products’s “complete rationale, including claim charts,” as presented in the
IPR. Douglas Dynamics argues that if “ground” is not limited this way, a defendant could assert
numerous bare-bones grounds in an IPR petition, knowing that those grounds would be
rejected by the PTAB, but thus preserved for later use in the district court. I agree with Douglas
Dynamics: invalidity grounds asserted in bad faith would be subject to estoppel. But that’s a
hypothetical example that is not our immediate concern.
The real issue is whether a defendant in Meyer Products’s position is stuck in the district
court with the same theories and arguments that it presented in its petition to PTAB. Douglas
Dynamics says that “ground” is defined by PTO regulations to include not just the claim, the
reference, and the general theory of invalidity, but an element-by-element analysis with specific
citations to evidence supporting the challenge. Dkt. 69, at 6 (citing 37 C.F.R. § 42.104(b)).

2

But this C.F.R. section articulates the required components of a petition for IPR. The only use
of the term “ground” in this C.F.R. section refers to “specific statutory grounds under 35 U.S.C.
102 or 103.” This does not help Douglas Dynamics’s argument about what is meant by
“ground” in § 315(e).
Douglas Dynamics also cites In re NuVasive, Inc., which is more informative. 841 F.3d
966 (Fed. Cir. 2016). In that case, a Federal Circuit review of an IPR decision, PTAB developed
and relied on its own theory of invalidity, different from that presented by the petitioner. That
theory was based on the same prior art, but on portions of the art not relied on by the
petitioner, and the patent owner never had the opportunity to respond to it. The Federal
Circuit concluded that under the Administrative Procedure Act, the patent owner was entitled
to an opportunity to respond. The court explained that “[i]n the related, non-IPR context, we
have relied on the APA’s requirements to find a ‘new ground’ where ‘the thrust of the rejection’
has changed, even when the new ground involved the same prior art as earlier asserted grounds
of invalidity.” Id. at 972 (citing In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)). NuVasive
does not involve § 315(e) estoppel, so it is not squarely on point. But it’s informative, because
it recognizes that one could build a brand-new invalidity theory based on the same prior art
that was presented to PTAB in a petition for review.
So following this guidance from NuVasive, if the “thrust” of a defendant’s infringement
theory is different from that presented in the IPR petition, the new theory is probably subject
to estoppel. To put this a bit more concretely, the defendant is not locked into the precise
argument made in its IPR petition. But if the new theory relies on different, uncited portions
of the prior art, attacks different claim limitations, or relies on substantially different claim

3

constructions, then the new theory is tantamount to a new invalidity ground, and the court
will treat it like a non-petitioned ground subject to estoppel.
How does this apply here? Douglas Dynamics contends that Meyer Products’s current
theory of how Keeler anticipates claim 6 is completely different from the theory Meyer
Products presented to PTAB. In its IPR petition, Meyer Products contended that Keeler did
not disclose a trunnion, but it used a pivot pin as a trunnion substitute. Dkt. 47-1, at 14. PTAB
declined to institute review on that ground. Now, back in this court, Meyer Products contends
that Keeler does disclose a trunnion—albeit under a broader construction of trunnion that
Douglas Dynamics has proposed.1 Dkt. 57-1, at 36. Douglas Dynamics argues that Meyer
Products’s new theory is a different invalidity ground, which Meyer Products brought out only
after PTAB was not persuaded by Meyer Products’s original theory. But Meyer Products
counters that its alternative theory was a response to Douglas Dynamics’s own expansive
construction of trunnion as a “combination of interconnected components.” Id. at 35. At this
point in the case, I cannot tell who, if anyone, is playing fast and loose with the meaning of
“trunnion.” But it hardly seems fair to restrict Meyer Products to the claim construction used
in the IPR, if Douglas Dynamics is free to re-tool its infringement case with new claim
constructions, as Douglas Dynamics suggests that it is free to do. Dkt. 72-1, at 3. I will defer a
decision on whether these principles would estop Meyer Products from contending that claim
6 is anticipated by Keeler under the alternative interpretation of trunnion. The parties are free
to argue the § 315(e) estoppel issue at summary judgment.

1

I agree with Meyer Products that Douglas Dynamics did not adequately raise this argument
in its original motion because it was tucked into the footnotes. And the footnotes did not cite
or explain Meyer Products’ purportedly new argument, other than to point generally at an
attached claim chart. See Dkt. 57, at 9 n.4.

4

DKT. 70
Douglas Dynamics seeks leave to amend its infringement contentions. Dkt. 70. Meyer
Products opposes. Dkt. 74.
Two preliminary points. First, as stated in the Amended Pretrial Conference Order, Dkt.
31, the court applies Federal Rule of Civil Procedure 15 to motions to amend core substantive
contentions. There is no need to address the standards for amending a scheduling order under
Rule 16. Second, a party cannot “reserve the right” to amend its contentions in response to
actions by the other side, or to court rulings, or to anything else. Any attempt to reserve the
right to amend a disclosure or filing required by the scheduling order is a nullity. A party can
amend a disclosure or filing only as allowed by the scheduling order, by the rules of civil
procedure, or as otherwise allowed by the court, period.
Meyer Products opposes the requested amendment, so the question here, under Rule
15(a)(2), is whether justice requires me to allow the amendments proposed by Douglas
Dynamics. As the court explained in the Amended Pretrial Conference Order: “The court
expects the parties to commit to their core substantive contentions early in the case, and the
court will be increasingly reluctant to allow amendments as the deadline for expert disclosures
approaches.” Dkt. 31, at 1-2. The reason for this warning is that as the case progresses, changes
to core substantive contentions are increasingly prejudicial to the other side. This case has been
pending in this court since December 2014. And although this case was stayed for more than
a year, during the stay the parties litigated the IPR to completion. I see little reason why the
parties’ core substantive contentions should be changing after nearly two and one-half years of
litigation. After the stay was lifted, the parties agreed on a date to exchange amended proposed
claim constructions, but neither side suggested that amendments to core substantive

5

contentions were needed. Expert reports are due in about a month, June 16, 2017. Changes in
core substantive contentions at this point are unavoidably prejudicial. So Douglas Dynamics
would have to show strong reasons for amendments at this point.
Douglas Dynamic contends that its amendments are necessary to respond to the
amended claim constructions proposed by Meyer Products on April 28, 2017. But Douglas
Dynamics does not explain how Meyer Products’s constructions necessitate any amendment.
Meyer Products’s current construction of “trunnion” is a “transversely extending bar that is
not a pivot pin.” But Douglas Dynamics does not explain how that is substantively different
from Meyer Products’s original proposed construction in this case or that presented in its IPR
petition:
[trunnion means a] bar that: (1) has length in a side-to-side
(transverse) direction; (2) pivots about a transverse, horizontal
axis; (3) pivots relative to the lift frame; and, (4) is not a pivot
pin.
Dkt. 47-1, at 7. Douglas Dynamics does not explain how what appears to be at most a subtle
re-articulation of a proposed claim term would justify significantly revised infringement
contentions. Sometimes subtle changes can mean a lot in claim construction, but Douglas
Dynamics hasn’t shown why that would be the case here. And I certainly do not see why this
subtle change would justify the assertion of infringement under the doctrine of equivalents,
which is an altogether new infringement theory.
The other claim term at issue is “A-frame,” for which Meyer Products proposes no
construction. Douglas Dynamics argues that Meyer Products’s infringement contentions
include other requirements for the A-frame, and that “Meyer’s very narrow set of ‘requirements’
remains a buried construction, to which Douglas may at some point need to respond.” Dkt.
70, at 7. As far as I can tell, the “narrow set of requirements” are the other claim limitations. I

6

will not allow Douglas Dynamics to revise its core substantive contentions at this late date to
anticipate some unspecified “buried” construction. Nothing about Meyer Products’s proposed
construction of A-frame would justify Douglas Dynamics amending its core infringement
contentions. And, again, I see no reason to allow a late assertion of infringement under the
doctrine of equivalents.
Douglas Dynamics proposes several other amendments. Id. at 8 (in the paragraph that
begins “Finally . . .”). Meyer Products objects to those in a footnote. Dkt. 74, at 3 n.3. Although
Meyer Products is correct that Douglas Dynamics offers no reason for the lateness of these
amendments, Meyer Products cites no prejudice that would result from allowing them. These
amendments are late, but they are apparently innocuous, so under Rule 15 they are allowable.

ORDER
IT IS ORDERED that:
1. Plaintiff Douglas Dynamics Dynamics, LLC’s motion for leave to file a reply,
Dkt. 72, is GRANTED.
2. Plaintiff’s motion for reconsideration, Dkt. 69, is DENIED in part and GRANTED
in part, as provided in the opinion above.
3. Plaintiff’s motion to amend its infringement contentions, Dkt. 70, is DENIED for
the most part, but GRANTED in part as provided in the opinion above.
Entered May 15, 2017.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

7