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Total Rebuild Inc. v. PHC Fluid Power L.L.C.

United States District Court, W.D. Louisiana, Lafayette Division

September 9, 2019

TOTAL REBUILD, INC.
v.
PHC FLUID POWER, L.L.C.

          CAROL B. WHITEHURST MAG. JUDGE

          RULING

          TERRY A. DOUGHTY UNITED STATES DISTRICT JUDGE

         This is 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.

         Pending before the Court is Defendant's “Motion in Limine regarding Accused Systems Not Identified in Infringement Contentions” [Doc. No. 296]. Plaintiff responded to the motion. [Doc. No. 331].

         For the following reasons, the motion is GRANTED IN PART and DENIED IN PART.

         I. PERTINENT FACTS AND PROCEDURAL HISTORY

         Defendant moves the Court to enforce the Patent Rules for the Eastern District of Texas (“Patent Rules”) in this case. Defendant argues that the Joint Scheduling Order set a due date of August 8, 2016, for Plaintiff to comply with Patent Rule 3-1. [Doc. No. 296-1 at 5] (citing Doc. No. 50 at 1).[1] Patent Rule 3-1 requires Plaintiff to serve infringement contentions that identify the “Accused Instrumentality, ” and includes “[a] chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality.” [Doc. No. 51-1 at 6-7].

         On August 23, 2016, Plaintiff served its Disclosure of Asserted Claims and Preliminary Infringement Contentions (“Original Infringement Contentions”) on Defendant. [Doc. No. 296-1 at 5). Defendant argues that the Original Infringement Contentions include only generic names without any reference to any specific device or process as required by Patent Rule 3-1(b). Id. at 6. On January 23, 2017, Plaintiff served its Supplemental Disclosure of Asserted Claims and Preliminary Infringement Contentions (“First Supplemental Contentions”) on Defendant. Id. Defendant contends that the First Supplemental Contentions include the identical Patent Rule 3-1(b) disclosure found in the Original Infringement Contentions. Id. Defendant further contends that Plaintiff's counsel “spent over 20 hours at PHC's Houston, Texas facility reviewing, inspecting, and scanning design documents, drawings, and other related documents for pressure testing systems sold by PHC, ” on June 7-9, 2017. Id. at 7.

         On August 27, 2018, over a year after the on-site review, Plaintiff served its Second Supplemental Disclosure of Asserted Claims and Preliminary Infringement Contentions (“Second Supplemental Contentions”) on Defendant. Id. at 8. Defendant argues that the Second Supplemental Contentions include only generic names without any reference to any specific device or process as required by Patent Rule 3-1(b). Id. at 9. On November 30, 2018, Plaintiff's counsel sent the following email to Defendant regarding infringement contentions for specific units. Id. at 10.

         Sam, I'm still working on it May not be done tonight though. The chart is taking too long. I'm going to be working on it over the weekend to get to you as soon as I can. But, in the meantime, I can at least identify the specific units we allege are infringing:

         (Image Omitted)

[Doc. No. 296-2 at 2]. On December 6, 2018, Plaintiffs counsel sent the following email stating that its Third Supplemental Infringement Contentions would be “accurate and sufficiently detailed regarding each unit.”

         (Image Omitted)

[Doc. No. 296-3 at 2]. On December 10, 2018, over three and a half years after this case began, Plaintiff served its Third Supplemental Infringement Contentions on Defendant. [Doc. No. 296-1 at 11). On February 28, 2019, Defendant moved to strike Plaintiffs 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.

         On 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.

         The 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.

         On April 1, 2019, Plaintiff's counsel stated in an email that it was asserting infringement by “one additional system attached as a pdf to this email, ” which is identified in the email as “PHC-TB-15-W-ASFB10-ASF150-RV-CR-SPCL” to Wells Dynamics. [Doc. No. 296-1 at 12]. Per the April 1, 2019 email, the eight systems Plaintiff identified as infringing are as follows:

1. PHC-TB-30-W-ASF100-HSF302-RC to Cameron (hereinafter “Cameron Black”)
2. PHC-TB-23-W-ATV4-HSF202-RV-RC to Cameron (hereinafter “Cameron ...

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