United States District Court, D. Minnesota
Annamarie A. Daley, Niall A. MacLeod, and Emily Grande Stearns, BARNES & THORNBURG, LLP, , Minneapolis, MN, for plaintiff.
Harry C. Marcus, Joseph Farco, and Robert K. Goethals, LOCKE LORD, LLP, Three World Financial Center, New York, NY; and Kevin D. Conneely, STINSON LEONARD STREET LLP, Minneapolis, MN, for defendants.
MEMORANDUM OPINION AND ORDER AFFIRMING THE MAY 12, 2014 ORDER OF THE MAGISTRATE JUDGE
JOHN R. TUNHEIM, District Judge.
This case involves a patent infringement dispute between two snowmobile manufacturers over patents related to internal combustion engines, engine systems, and methods for controlling those engines. Plaintiff, Arctic Cat Inc. ("Arctic Cat") objects to the order of United States Magistrate Judge Leo I. Brisbois denying its motion to strike the prior art statement of Defendants Bombardier Recreational Products, Inc. and BRP U.S., Inc. (collectively, "BRP"). The Court has carefully considered Arctic Cat's timely objections. Because the Court finds that the Magistrate Judge did not err in considering the lack of prejudice to Arctic Cat in denying its motion to strike, the Court will overrule Arctic Cat's objections and affirm the order of the Magistrate Judge.
I. DISCOVERY RELATED TO CLAIM CONSTRUCTION
On April 19, 2013, the Court entered a pretrial scheduling order requiring Arctic Cat to serve claim charts on BRP on or before May 10, 2013. (Pretrial Scheduling Order at 4, Apr. 19, 2013, Docket No. 19.) BRP's claim charts - indicating which elements on Arctic Cat's charts it admitted were present in the accused products and which it contended were absent - were due on or before July 10, 2013. ( Id. at 5.) BRP was also required to serve prior art statements for each asserted patent within ninety days of receiving Arctic Cat's claim charts. ( Id. at 8.) Within seventy-five days of receiving BRP's prior art statements, Arctic Cat was required to serve its own prior art statements responding to any allegations of invalidity set out in BRP's prior art statements. ( Id. at 8-9.) The scheduling order provides that amendments to the claim charts and prior art statements may only be made with "leave of the Court for good cause shown." ( Id. at 5, 8-9.)
Arctic Cat served its claim charts on BRP on May 13, 2013. (Fifth Decl. of Annamarie A. Daley ¶ 2, May 27, 2014, Docket No. 116.) BRP objected to the sufficiency of these charts and Arctic Cat agreed to make amendments. ( Id. ¶ 3.) Arctic Cat served BRP with the amended charts on November 8, 2013. ( Id. ¶ 4.) On December 19, 2013, BRP filed a motion to compel claim charts on the basis that the amended charts were substantively deficient and failed to provide the detailed explanation required by the Court's scheduling order. (Mot. to Compel, Dec. 19, 2013, Docket No. 66; Mem. in Supp. of Mot. to Compel at 1, 9, Dec. 19, 2013, Docket No. 68.) The Magistrate Judge denied the motion, finding that Arctic Cat's amended claim charts were not deficient. (Order, Feb. 4, 2014 at 10-11, Docket No. 79.) The Court ordered BRP to file its own claim charts by February 18, 2014, ( id. at 11), which BRP did, (Fifth Daley Decl. ¶ 7). BRP then served its prior art statement on April 4, 2014. ( Id. ¶ 8.)
II. MOTION TO STRIKE
On April 10, 2014, Arctic Cat brought a motion pursuant to Federal Rules of Civil Procedure 16(f)(1) and 37(b)(2)(A), requesting that the Court strike BRP's prior art statement and prohibit BRP from supporting its claims or defenses with "any information that was, or should have been, contained in its Prior Art Statement." (Mot. to Strike at 1, Apr. 10, 2014, Docket No. 82.) Arctic Cat argued that BRP's prior art statement should be stricken as untimely under the scheduling order. (Mem. in Supp. of Mot. to Strike at 1, Apr. 10, 2014, Docket No. 84.) Arctic Cat contended that BRP's prior art statement was due on August 12, 2013 - ninety days after Arctic Cat served its initial claim charts on May 13, 2013 - but that they did not serve it until almost eight months later on April 4, 2014. ( Id. at 2.)
III. MAGISTRATE JUDGE'S ORDER
The Magistrate Judge held a hearing on Arctic Cat's motion to strike on April 24, 2014. (Minute Entry, Apr. 24, 2014, Docket No. 109.) On May 12, 2014, the Magistrate Judge issued an order denying Arctic Cat's motion to strike. (Order, May 12, 2014, Docket No. 110.) The Magistrate Judge began by calculating when BRP's prior art statement was due, noting that "[d]ue to the parties' mutual delays and failure to follow the deadlines prescribed in the Court's existing Pretrial Scheduling Order, [Docket No. 19], it is somewhat unclear when precisely BRP should have produced its Prior Art Statement." ( Id. at 4.) The Magistrate Judge explained that "[i]n light of the agreed upon amendment of Arctic Cat's claim charts, using Arctic Cat's original claim chart disclosure date of May 13, 2013, to calculate BRP's Prior Art Statement deadline would be somewhat disingenuous" and given Arctic Cat's delay in producing the amended charts "BRP's 90-day window to serve its Prior Art Statement more appropriately should have been calculated from Arctic Cat's November 8, 2013, amended claim charts disclosure." ( Id. ) Using November 8, 2013 as a starting point, the Magistrate Judge determined that BRP's prior art statement was due on or before February 6, 2014, making its April 4, 2014 disclosure untimely. ( Id. )
The Magistrate Judge then explained that BRP's untimely disclosure was based upon its "unilateral" and "incorrect" presumption "that it was entitled to an extension simply by virtue of filing its Motion to Compel Amended Claim Charts." ( Id. ) The Magistrate Judge noted that "BRP should have (1) consulted with Arctic Cat to possibly seek a stipulated extension, or (2) approached the Court for an explicit extension/amendment to the scheduling order" rather than making the decision to wait to produce the prior art statements until after the Court's resolution of its motion to compel amended claim charts. ( Id. )
With respect to Arctic Cat's position that BRP's prior art statement was due ninety days after the May 2013 production of Arctic Cat's claim charts, the Magistrate Judge explained that Arctic Cat was incorrect "because both parties acknowledged that the original charts were not yet then in their final form... and Arctic Cat agreed to voluntarily produce amended charts" but "unfortunately, significant time was allowed to slip by because Arctic Cat delayed (and ...