United States District Court, D. Minnesota
Courtland C. Merrill, Daniel R. Hall, Joseph W. Anthony, Cory
D. Olson, Steven C. Kerbaugh, Steven M. Pincus, Anthony
Ostlund Baer & Louwagie P.A., Jon E. Wright, Sterne
Kessler Goldstein & Fox, and Ryan S. Dean, Fish &
Tsang LLP, for Plaintiff and Counterclaim Defendants.
G. Carlson, Jonathan D. Carpenter, Peter Kohlhepp, Tara C.
Norgard, Carlson Caspers Vandenburgh Lindquist & Schuman
P.A., Joseph P. Reid, Patrick J. McKeever, Thomas N.
Millikan, Yun L. Lu, Perkins Coie LLP, and Kenneth J.
Halpern, Perkins Coie LLP, for Defendants and Counterclaim
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
the Court are two matters related to Plaintiff Luminara
Worldwide, LLC's decision to withdraw its expert Doug
Patton, and to substitute Dr. Stuart Brown in Patton's
place. The first, memorialized in a Joint Status Report [Doc.
No. 718] submitted by the parties on December 20, 2016, and
by several briefs filed thereafter, seeks a ruling from the
Court as to (1) the timing and structure of refiling various
summary judgment memoranda; (2) whether a hearing will be
held to reconsider the impacted summary judgment motions; (3)
whether Plaintiff will be allowed to refile its renewed
motion for preliminary injunction at this time; and (4)
whether Plaintiff should bear the costs associated with its
decision to withdraw Patton as an expert. The second consists
of Defendants' Daubert motion as to Dr. Brown.
(See Defs.' Daubert Mot. Against
Pl.'s Expert Stuart Brown [Doc. No. 489].) The
Court's decisions as to each matter are discussed below.
ISSUES RELATED TO PENDING SUMMARY JUDGMENT MOTIONS
reasons that have been discussed at length in several other
orders of this Court, Plaintiff Luminara Worldwide, LLC
(“Luminara”) chose to withdraw its designation of
Patton as a non-reporting expert witness on November 22,
2016. (Nov. 22, 2016 Letter to District Judge [Doc. No.
692].) See generally Luminara Worldwide, LLC v. Liown
Elecs. Co., No. 14-cv-3103 (SRN/FLN), 2016 WL 6774229
(D. Minn. Nov. 15, 2016). On order of the Court, the parties
met and conferred regarding the effect of Patton's
withdrawal on several summary judgment motions then pending.
(See Minutes [Doc. No. 708].) Ultimately, both sides
agreed that parts of both Luminara's and Defendants'
motion for summary judgment were impacted by the withdrawal,
and would require refiling. (See Joint Status Report
at 2.) The parties were unable to fully agree on the
mechanics of that process, however. (See id.)
initial point of contention relates to the extent to which
the summary judgment memoranda needed to be altered to
reflect Patton's replacement by Brown, and the schedule
by which those memoranda should be refiled. There appears to
be general agreement that Luminara will refile redlined
memoranda in support of its motion for summary judgment, and
in opposition to Defendants' motion, replacing any
reference to Patton's testimony with citations to
evidence provided by Dr. Brown. (See Id. at 3, 5.)
The disagreement relates primarily to the timing for filing
responses and reply briefs. Having considered the
parties' submissions, the Court will order as follows:
1. Seven days after the date of this Order, Luminara will
refile its redlined motion for summary judgment of
2. Twenty-one days later, the parties will simultaneously
file (1) Defendants' opposition to Luminara's motion
for summary judgment; (2) Luminara's redlined opposition
to Defendants' motion for summary judgment of
non-infringement; and (3) Luminara's redlined opposition
to Defendants' motion for summary judgment on trade
3. Fourteen days later, the parties will simultaneously file
(1) Luminara's reply on its motion for summary judgment
of infringement; (2) Defendants' reply on their motion
for summary judgment of non-infringement; and (3)
Defendants' reply on their motion for summary judgment on
parties are reminded that their briefing should be limited to
those portions of the motions for summary judgment that were
deemed to be affected by Patton's withdrawal. (See
Id. at 1-2.)
next two matters may be addressed summarily. The parties
contest whether a hearing is required to consider Dr.
Brown's evidence, and to address any inconsistencies that
may exist between positions he has taken at various points of
this litigation. (See Id. at 5.) Similarly, there is
disagreement as to whether Luminara should be allowed to
refile its motion for preliminary injunction at this time, or
whether it must wait until after the motions for summary
judgment are disposed of. (See Id. at 4, 5-6.)
Having considered the arguments, the Court concludes that no
new hearing is required, and that there is no good reason to
require Luminara to delay refiling its preliminary injunction
motion. Accordingly, Defendants' requests as to both
issues are denied.
fourth and most heavily contested matter presented by the
parties has to do with who must bear the costs associated
with rebriefing the summary judgment motions. Defendants
argue that case law and justice demand that as the party
responsible for Patton's withdrawal, Luminara must pay
all costs and fees associated with at least (1) preparing and
taking Dr. Brown's deposition regarding his new opinions;
and (2) rebriefing the affected summary judgment motions.
(See Defs.' Mem. re Patton [Doc. No. 739] at
5-11.) Luminara responds that it should not be assessed costs
because its decision to withdraw Patton as an expert has only
minimal effect on the motions pending before the Court, and
because it acted in good faith. (See Pl.'s Mem.
re Patton [Doc. No. 737] at 13-15.) In addition, Luminara
argues that it has ...