United States District Court, D. Minnesota
Carolyn H. B. Eckart, Esq., Catherine Shultz, Esq., David R. Fairbairn, Esq., Jessica M. Alm, Esq., Katherine J. Rahlin, Esq., and Larrin Bergman, Esq., Kinney & Lange, PA, counsel for Plaintiff.
Michael D. Ricketts, Esq., Monica Tavakoli, Esq., Eric W. Buether, Esq., and Mark D. Perantie, Esq., Buether Joe & Carpenter, LLC; Alan G. Carlson, Esq., James R. Hietala, Jr., Esq., and Joseph W. Winkels, Esq., Carlson Caspers Vandenburgh Lindquist & Schuman PA, counsel for Defendant.
MEMORANDUM OPINION AND ORDER
DONOVAN W. FRANK, District Judge.
This matter is before the Court on a motion for summary judgment of non-infringement (Doc. No. 89) and a motion to exclude (Doc. No. 108) brought by Defendant Stealth Cam, LLC ("Stealth Cam"). For the reasons set forth below, the Court grants in part and denies in part the motion for summary judgment and grants in part and denies in part the motion to exclude.
On February 1, 2012, Plaintiff Larry Holmberg ("Holmberg") filed this lawsuit against Stealth Cam, alleging infringement of U.S. Patent No. 7, 880, 793, entitled "Camera with Mounting Rail" (the "'793 Patent"). (Doc. No. 1.) On August 17, 2011, Holmberg amended his Complaint, adding a claim for infringement of U.S. Patent No. 6, 556, 245, entitled "Game Hunting Video Camera" (the "'245 Patent"). (Doc. No. 25.) On January 17, 2012, Holmberg filed a Second Amended Complaint, adding claims for infringement of U.S. Patent No. 8, 045, 038, entitled "Video Camera with Mount" (the "'038 Patent"), and U.S. Patent No. 8, 059, 196, entitled "Camera for Mounting" (the "'196 Patent"). (Doc. No. 42, Second Am. Compl.)
The four patents-in-suit all relate to a video camera with a mounting apparatus and share the same specification. The Court refers to them collectively as the "Holmberg Patents." Holmberg is the sole inventor of the Holmberg Patents, and describes the invention in the '245 Patent as follows:
This invention relates to a design of a video camera for recording game hunting. More specifically it relates to a video camera design that is mountable on a weapon so a hunter can record what he or she sees as he or she is hunting without the help of a third party and without the limitations of related art.
('245 Patent, c. 1, ll: 15-20.)
Stealth Cam manufactures and sells digital cameras and accessories for outdoor pursuit applications, including light-weight digital video cameras for use during activities such as biking, paddling, and snowboarding. (Doc. No. 93 ("Mann Decl.") ¶¶ 3, 4.) In or around 2008, Stealth Cam introduced the EPIC Action Sports Video Camera, a portable digital video camera that can be mounted to various objects, such as helmets, handlebars, arms, or boots. ( Id. ¶ 6.) The accused products include Stealth Cam's EPIC D1 POV Video Cam, EPIC HD (High Definition) 1080P, Epic HD 720P, and Epic Wide (the "Accused EPIC Cameras" or "EPIC Cameras"). (Doc. No. 117 ("Rahlin Decl.") ¶ 2, Ex. 1 ("Pl.'s Claim Chart") at 1.) Stealth Cam also offers various accessories for its EPIC Cameras, such as adjustable hardware mounts, waterproof housing, hat clip mounts, strap mounts, tree screws, and shock absorbing pads. (Mann Decl. ¶¶ 8-9.) Additionally, Stealth Cam offers for sale an accessory that can be used with its EPIC cameras for viewing images recorded by the camera-the EPIC Viewer. ( Id. ¶¶ 14-15.) The EPIC Viewer is a display screen that connects to the EPIC camera via an A/V cable that is sold with the camera. ( Id. )
On February 8, 2012, Holmberg filed his "Statement of the Case" asserting that Stealth Cam infringed the Holmberg Patents directly. (Doc. No. 49 at 2 ("Defendant Stealth Cam, LLC has been and is making, using, selling, offering for sale, and/or importing, without license or authority from [Holmberg], cameras that embody the invention(s) claimed in the [Holmberg Patents].").) Specifically in this action, Holmberg asserts that the Accused EPIC Cameras infringe claims 1-17 of the '793 Patent, claims 1-10 and 13-20 of the '038 Patent, claims 1-20 of the '196 Patent, and claim 8 of the '245 Patent.
On February 22, 2012, the Court entered a Pretrial Order establishing various deadlines in the case. (Doc. No. 49.) On April 1, 2012, Holmberg served his claim chart (Infringement Contentions). (Pl.'s Claim Chart.) In his claim chart, Holmberg asserts direct infringement of the Holmberg Patents, but does not assert infringement under the doctrine of equivalents or inducement. On May 8, 2012, Stealth Cam served its non-infringement claim chart. (Rahlin Decl. ¶ 3, Ex. 2 ("Def.'s Claim Chart").) In its claim chart, Stealth Cam argues, among other things, that its Accused EPIC Cameras do not contain a mounting rail for mounting the cameras to an object or a display. ( Id. at 4, 5, 9.) Stealth Cam also asserts that it has not made, used, or sold any camera "for mounting to a functional weapon." ( Id. at 4, 8.)
On February 8, 2013, the Court entered an Amended Pretrial Order, which provided the following with respect to the deadline for submitting expert reports:
That both parties' disclosures on which they have the burden of proof shall be made on or before the latter of July 15, 2013, or 30 days after a claim construction ruling by the Court. The rebuttal experts' disclosures shall be disclosed on or before the latter of August 16, 2013, or 60 days after a claim construction ruling by the Court.
(Doc. No. 60 at 7 (emphasis in original).) Subsequently, on May 28, 2013, pursuant to the joint stipulation of the parties (Doc. No. 83), the Court ordered that the deadlines regarding expert disclosure be extended as follows: "The deadline for the parties' expert disclosure on which the party has the burden of proof shall be August 14, 2013.... The deadline for rebuttal expert disclosure shall be September 18, 2013.... The deadline for completion of expert discovery shall be October 14, 2013." (Doc. No. 85.) The parties then agreed to extend the date to exchange expert reports to August 26, 2013. (Rahlin Decl. ¶ 9, Ex. 8.)
On July 15, 2013, the Court issued its claim construction order. (Doc. No. 87 (" Markman Order").) On August 26, 2013, Holmberg submitted the expert report of Fred P. Smith on the issue of infringement. (Doc. No. 103 ("Smith Decl.") ¶ 5, Ex. A ("Smith Expert Report I").) Stealth Cam submitted its expert report on non-infringement on October 2, 2013. (Doc. No. 92 ("Buckman Decl.") ¶ 4, Ex. A ("Buckman Expert Report").)
Stealth Cam moved for summary judgment on non-infringement, and the hearing date was ultimately set to occur after a settlement conference in early December 2013. The parties agreed to a briefing schedule pursuant to which Holmberg's opposition would be due November 12, 2013, and Stealth Cam's reply would be due November 26, 2013. (Doc. No. 101.) When Holmberg filed his opposition to Stealth Cam's motion for summary judgment, it was accompanied by the Declaration of Fred P. Smith, which in turn included Smith's August 26, 2013 Expert Report, as well as a supplemental expert report dated November 12, 2013. (Smith Expert Report I; Smith Decl. ¶ 6, Ex. B ("Smith Expert Report II").)
The Court considers Stealth Cam's motion to exclude and motion for summary judgment below.
I. Motion to Exclude
Stealth Cam moves to exclude: (1) Smith's November 12, 2013 expert report as untimely; (2) any theories of infringement under the doctrine of equivalents and indirect infringement because they were not disclosed in Holmberg's infringement contentions; and (3) the infringement theory that the EPIC Viewer accessory combined with the Accused EPIC Cameras can satisfy the "display" limitation because this theory was not disclosed in Holmberg's infringement contentions.
Stealth Cam argues that Smith's November 12, 2013 expert report is untimely and should be excluded. In particular, Stealth Cam asserts that the deadline for Holmberg to submit an expert report on the issue of infringement was August 26, 2013. Stealth Cam also argues that even if Smith's November 12, 2013 expert report is properly characterized as a "rebuttal" report, it was due "within 30 days of [Stealth Cam's] disclosures" and, therefore, would have been due on November 1, 2013. See Fed R. Civ. P. 26(a)(2)(C)(ii).
Holmberg asserts that the November 12, 2013 expert report was timely because Stealth Cam presented a new non-infringement theory (that its cameras do not infringe because they are not capable of being directly attached to a weapon) in Buckman's October 2, 2013 expert report and in its motion for summary judgment. Holmberg submits that this theory was not set forth in Stealth Cam's claim chart or during the Markman hearing. Finally, Holmberg argues that any supplementation must be completed by the time of pretrial disclosures. See Fed.R.Civ.P. 26(e).
The parties agree that Rule 37 of the Federal Rules of Civil Procedure governs "Failure to Disclose or Supplement" under Rule 26(a) or (e). Rule 37 provides that the failure to disclose information under Rule 26(a) or (e) can result in sanctions, including the exclusion of the information, unless the failure to disclose was substantially justified or harmless. Fed.R.Civ.P. 37(c)(1).
Here, with respect to the timeliness of Smith's November 12, 2013 expert report, the parties debate the implications of, at most, a period of eleven days. Even if Stealth Cam is correct and Smith's November 12, 2013 expert report was untimely by eleven days, this delay, alone, does not warrant the sanction of excluding the report. However, the Court will discuss Stealth Cam's motion as it pertains to the alleged inclusion of newly asserted theories of infringement below.
B. New Theories
The Court has previously recognized the importance of infringement contentions and the role they serve in patent cases by requiring a plaintiff "to crystallize its theory of the case and patent claims." See In re Vehicle Tracking and Sec. Sys. ('844) Patent Litig., MDL No. 11-2249, 2012 WL 3776463, at *2 (D. Minn. Aug. 30, 2012) (citing InterTrust Techs. Corp. v. Microsoft Corp., Civ. No. 01-1640, 2003 U.S. Dist. LEXIS 22736, at *8 (N.D. Cal. Nov. 26, 2003)). "[W]hen parties formulate, test, and crystallize their infringement theories before stating their preliminary infringement contentions, as the Patent Rules require, the case takes a clear path, focusing discovery on building precise final infringement or invalidity contentions and narrowing issues for Markman, summary judgment, trial, and ...