United States District Court, W.D. Louisiana, Lafayette Division
TOTAL REBUILD, INC.
PHC FLUID POWER, L.L.C.
B. WHITEHURST MAG. JUDGE
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 Not Identified in
Infringement Contentions” [Doc. No. 296]. Plaintiff
responded to the motion. [Doc. No. 331].
following reasons, the motion is GRANTED IN PART and DENIED
PERTINENT FACTS AND PROCEDURAL HISTORY
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
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].
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.
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.
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:
[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
[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.
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.
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
2. PHC-TB-23-W-ATV4-HSF202-RV-RC to Cameron (hereinafter