United States District Court, W.D. Louisiana, Lafayette Division
TOTAL REBUILD, INC.
PHC FLUID POWER, L.L.C.
JUDGE CAROL B. WHITEHURST
A. DOUGHTY UNITED STATES DISTRICT JUDGE
a patent infringement case in which Plaintiff Total Rebuild
(“Plaintiff”) contends systems and/or methods
utilized by or through Defendant PHC
(“Defendant”) infringe claims of United States
Patent No. 8, 146, 428 (“the '428 Patent”).
The '428 Patent is directed to systems and methods for
safely testing devices and components under high-pressure.
before the Court is Defendant's “Motion in
Limine Regarding Accused Systems” [Doc. No. 290].
Plaintiff responded to the motion. [Doc. No. 319].
following reasons, the motion is GRANTED IN PART and DENIED
PERTINENT FACTS AND PROCEDURAL HISTORY
December 10, 2018, over three and a half years after this
case began, Plaintiff served its Third Supplemental
Infringement Contentions on Defendant. [Doc. No.
232-2]. On February 28, 2019, Defendant moved to
strike Plaintiff's Third Supplemental Infringement
Contentions (“Motion to Strike”). [Dkt. No. 243].
Defendant argued in the Motion to Strike that Plaintiff was
attempting to vastly expand its infringement theories, and
that the Third Infringement Contentions were untimely because
they were served over 2 years after the deadline, and after
fact discovery had closed. Id. at 1.
March 28, 2019, the Court granted the Motion to Strike and
found that Plaintiff was improperly trying to expand its
infringement contention by taking the new position that
“using pumps or pump systems outside an
explosion-safety housing can infringe its patent.”
[Doc. No. 263 at 2] (emphasis in original). The Court noted
that Plaintiff “does not dispute that its latest
contentions ‘vastly expand' its claims or that it
failed to serve the contentions until December 2018.”
Id. Instead, Plaintiff argued that its
supplementation was timely because the Court has not adopted
the proposed scheduling order (Doc. No. 162-1) and local
rules allow it to amend its contentions as late as 30 days
after a claim-construction ruling. Id.
Court found that “[b]ecause the Court has not made a
claim-construction ruling, Local Patent Rule 3-6(a) does not
apply.” Id. at 3. The Court further found that
the factors courts consider when evaluating motions to strike
all weighed in favor of striking the contentions.
Id. at 4-5. The Court then granted Defendant's
Motion to Strike Infringement Contentions (Doc. 243), and
further ordered that Plaintiff “is PRECLUDED from
proceeding on any infringement theory not identified with
sufficient specificity in its original infringement
contentions, first supplemental infringement contentions, or
second supplemental infringement contentions. A boilerplate
allegation of infringement under a doctrine-of-equivalents
theory is insufficient.” Id. at 6.
January 8, 2019, Defendant filed a “Motion in Limine
Regarding Systems with Testing Equipment Outside of
Housing” [Doc. No. 207]. Defendant moved to preclude
Plaintiff from offering evidence that Defendant has directly
or indirectly infringed claims 3, 4, 5, 11, 12, 13, 14, 15,
18, and/or 19 of the '428 Patent by making, using,
selling, offering for sale, and/or importing a safety system
in which the high-pressure testing equipment is located
outside an explosion proof housing. [Doc. No. 208 at 1].
Defendant's motion was closely related to the issue
presented in Defendant's Motion to Strike Infringement
Contentions (Doc. 243), discussed above. In resolving the
motion in limine, the Court indicated that its
“analysis proceeds and is informed by the Court's
‘RULING AND ORDER granting 243 Motion to Strike
242.'” [Doc. No. 282 at 3](citing Doc. No. 263).
Accordingly, the Court granted Defendant's motion to the
extent that the evidence is based on an infringement theory
not identified with sufficient specificity in Plaintiff's
original infringement contentions, first supplemental
infringement contentions, or second supplemental infringement
contentions. (282 at 5). The Court further stated the
Finally, as stated in the Court's Claim Construction
Order, the plumbing and hoses that couple the high-pressure
pneumatics testing equipment to the high-pressure device for
testing are not the recited “high-pressure pneumatics
testing equipment.” The “high-pressure pneumatics
testing equipment” is a separately claimed element from
the structure for “coupling said high-pressure
pneumatics testing equipment to said high-pressure
device.” The plain language of the claims require both
the “high-pressure pneumatics testing equipment”
and the “means . . . for coupling” to be
“within said housing.”
[Doc. No. 282 at 5].
to the parties' arguments, Defendant contends that this
Court unambiguously held that Plaintiff is precluded from
pursuing a theory of infringement whereby the pumps or pump
systems are located outside the explosion proof housing
because this infringement theory was not timely disclosed.
[Doc. No. 290-4 at 4]. Defendant argues that Plaintiff's
theory of infringement for six of the systems identified by
Plaintiff is directly contrary to this order.
Id. Defendant further argues that the plain
language of the claims requires the high-pressure pneumatics
testing equipment to be located within the explosion proof
housing. Id. According to Defendant, the six systems
identified by Plaintiff have the high-pressure testing
pneumatics testing equipment located outside of the safety
housing, and therefore cannot infringe.
Id. Defendant argues that this means the six
identified systems are not relevant to any claim or defense,
and would be confusing, unduly prejudicial, and a needless
waste of time if presented to the jury. Id.
Defendant contends that allowing Plaintiff to maintain
theories of infringement that are not supported by the claim
language would be manifestly unjust. Id. at 14.
argues that its infringement contentions do not require that
the “high-pressure pneumatics testing equipment”
be located entirely within the claimed explosion-proof safety
housing. [Doc. No. 319 at 3]. Plaintiff further
argues that its infringement contentions do not limit
“high-pressure pneumatics testing equipment” to
“pumps or pump systems, ” as Defendant contends.
Id. According to Plaintiff, the Court “has
implicitly but clearly rejected the idea that only
‘pumps and pump systems' can compose
‘high-pressure pneumatics testing equipment' -
because ‘plumbing and hoses' are the
separately-recited ‘means for coupling.'”
Id. at 5 (citing Doc. No. 282 at 5). Plaintiff
argues that any system in which any “high-pneumatics
testing equipment” is disposed within an
“explosion-proof safety housing” is “fair
game.” Id. In other words, Plaintiff contends