United States District Court, D. Minnesota
Erik G. Swensen, Fulbright & Jaworski, LLP, 80 South Eighth Street, Suite 2100, Minneapolis, MN 55402; and
Ruth A. Rivard, Stinson Leonard Street LLP, 150 South Fifth Street, Suite 2300, Minneapolis, MN 55402, for Defendants.
TONY N. LEUNG, Magistrate Judge.
This matter is before the Court, United States Magistrate Judge Tony N. Leung, on Plaintiff BreatheableBaby LLC's ("BreatheableBaby") Motion to Strike Defendants' Untimely and Improperly Disclosed Prior Art Statement and Non-Infringement Charts (ECF No. 125). The Court heard oral argument on August 5, 2014. ( See ECF No. 134.) Erik Swenson argued on behalf of BreatheableBaby, and Ruth Rivard argued on behalf of Defendants ("Crown Crafts"). For the reasons set forth herein, Plaintiff's Motion (ECF No. 125) was GRANTED.
BreathableBaby commenced this lawsuit on January 11, 2012, alleging that Crown Crafts willfully infringed BreathableBaby's patented "Crib Shield System and Other Breathable Apparatus, " U.S. Patent No. 7, 055, 192 by making, offering to sell, and selling infringed products within the United States and importing them into the United States. (ECF No. 1 (Compl.) at ¶¶ 32-38.) Crown Crafts denied infringement and filed counterclaims for declaratory judgment of non-infringement and invalidity. (ECF No. 2.)
On March 15, 2012, this Court entered a pretrial scheduling order setting forth the case management schedule. (ECF No. 12.) As is standard in patent cases, the order provided deadlines by which the parties were to provide each other claims charts (April 1, 2012 for BreatheableBaby and May 1, 2012 for Crown Crafts) and Prior Art Statements (July 1, 2012 for Crown Crafts and August 1, 2012 for BreathableBaby). (ECF No. 12 at 4-5.) This schedule also required the parties to notify the Court whether a Markman hearing would be necessary after they had exchanged and met and conferred over their claims charts and Prior Art Statements. ( Id. at 4.)
This Court held a scheduling conference following disposition of Crown Crafts' ultimately unsuccessful early motion for summary judgment. ( See ECF No. 50.) On August 17, 2012, this Court issued an Amended Pretrial Scheduling Order. (ECF No. 51.) The Amended Pretrial Scheduling Order reset, among other things, the deadlines for Prior Art Statements (October 1, 2012 for Crown Crafts and November 1, 2012 for BreatheableBaby). (ECF No 51 at 5.) The deadlines for claims charts-which had already passed-remained unchanged. ( Id. )
On October 15, 2012, the parties informed the Court that there was no claim construction upon which they could agree and a Markman hearing would be necessary. (ECF No. 52.) On January 31, 2013, the Court scheduled the Markman hearing for May 15, 2013, and set the following briefing schedule: both parties were to file simultaneous opening briefs no later than April 1, 2013, and simultaneous response briefs no later than April 22, 2013. (ECF No. 55.)
Fact discovery closed on February 1, 2013, and BreatheableBaby timely filed a motion to compel discovery on February 15, 2013. (ECF No. 56.) This Court heard oral arguments on March 1, 2013, and the parties filed supplemental exhibits as late as March 6, 2013. ( See ECF Nos. 66-68.) The parties fully briefed the issue of claims construction as ordered by the Court, and the Honorable Patrick J. Schiltz, United States District Judge for the District of Minnesota, heard oral arguments on May 1, 2013. ( See ECF No. 87 (Transcript of Markman Hr'g).)
On May 31, 2013, this Court granted in part and denied in part BreatheableBaby's motion to compel. (ECF No. 89.) On August 6, 2013, this Court temporarily stayed the discovery ordered by its May 31, 2013 Order out of a "concern that the costs of discovery and litigation [were] quickly surpassing the amount in controversy." (ECF No. 107 at 1.) The Court ordered the parties to contact chambers shortly after Judge Schiltz's Markman order was filed to schedule a settlement conference. ( Id. at 2.)
The Markman order issued on September 17, 2013. (ECF No. 108.) With the playing field now set for the litigation moving forward to dispositive motion practice and trial, the Court scheduled a settlement conference with the parties on November 21, 2013. (ECF No. 111.) Unbeknownst to the Court, Crown Crafts served BreatheableBaby with an Amended Prior Arts Statement and an Amended Non-Infringement Chart on October 23, 2013.
The parties did not settle the matter at the November 21 settlement conference, but the Court required the parties to continue the meet-and-confer process and inform the court via confidential letter of the status of settlement discussions on or before December 18, 2013. (ECF No. 113.) After further status updates, the Court sent the parties to private mediation. (ECF No. 117.) Private mediation was ultimately unsuccessful, and the Court issued a Third Amended Pretrial Scheduling Order on June 4, 2014 that, inter alia, lifted the stay on the court-ordered discovery. (ECF No. 121.)
BreatheableBaby filed the instant motion on July 2, 2014, seeking to strike the Prior Art Statement and Non-Infringement Chart that Crown Crafts served in October 2013 (hereinafter, "Challenged Prior Art Statement" and "Challenged Non-Infringement Claims ...