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Willis Electric Co., Ltd. v. Polygroup Macau Limited (BVI)

United States District Court, D. Minnesota

October 28, 2019

Willis Electric Co., Ltd., Plaintiff
Polygroup Macau Limited (BVI), Polytree (H.K.) Co. Ltd., Polygroup Trading Limited Defendants.


          Katherine Menendez United States Magistrate Judge

         This matter is before the Court on Defendants Polygroup Macau Limited (BVI), Polytree (H.K.) Co. Ltd., Polygroup Trading Limited (collectively, “Polygroup”)'s Motion to Amend Prior Art Statement (ECF No. 345.) Plaintiff Willis Electric Co., Ltd. (“Willis”) opposes Polygroup's motion. After careful consideration, the Court determines that Polygroup's motion should be GRANTED IN PART AND DENIED IN PART.

         I. Factual Background

         Willis filed this lawsuit on August 28, 2015 alleging that Polygroup's “Quick Set” products infringe several of Willis's patents, including: U.S. Patent Nos. 8, 454, 186 (“ the ‘186 patent”), 8, 454, 187 (“the ‘187 patent”), 9, 044, 056 (“the ‘056 patent”), 8, 936, 379 (“the ‘379 patent”), 8, 974, 072 (“the ‘072 patent”), and 9, 066, 617 (“the ‘617 patent”). (Compl., ECF No. 1; see also Amend. Compl., ECF No. 23.) In April 2016, Polygroup filed petitions for inter partes review (“IPR”) in front of the United States Patent Trial and Appeal Board (“PTAB”), seeking to invalidate Willis's patents. (ECF No. 347 at 7.) In October of that year, the PTAB instituted IPR proceedings on three of those petitions. (See ECF No. 57.) Shortly thereafter, the parties stipulated to, and the Court granted, a stay in the litigation proceedings so that the IPR process could be completed. (Id.; see also ECF No. 61.)

         Ultimately, the PTAB found that Polygroup failed to demonstrate that any claims in the ‘186, ‘187, ‘379, ‘056, or ‘072 patents were unpatentable. The PTAB did not institute a review of the ‘617 patent. Polygroup appealed the decision to the Federal Circuit. On January 28, 2019, the Federal Circuit largely upheld the PTAB's decision not to invalidate any of Willis's patents. Polygroup Ltd., Co. v. Willis Electric Co., Ltd., 2018-1745, 2018-1746, 2018-1747, 758 Fed.Appx. 943 (Fed. Cir. Jan. 28, 2019).[1]Following the Federal Circuit decision, this Court lifted the stay “for purposes of litigation surrounding amendment of the pleadings and for discovery, but not for all pretrial proceedings.” (ECF No. 277.) Willis then served its response to Polygroup's Prior Art Statement, which Polygroup had served in 2016 shortly before the stay. (See ECF No. 347.)

         II. Analysis

         Polygroup now seeks to amend its Prior Art Statement to add eleven prior art references that Polygroup argues it discovered during the stay in this case. Specifically, Polygroup seeks to add the following references: Kohen, Levine, Mouser, Electric Connector Handbook (“ECH”), Geisthoff, Joining of Plastics (“Plastics”), Boto, Kao598, Willis One Plug Tree Sales (“OPT”), Polygroup Quick Set 1.0 tree sales (“QS1”) and Loomis443.[2] Additionally, Polygroup seeks to add new combinations to its Prior Art Statement based on claim construction positions taken by Willis in the IPR proceedings. Finally, Polygroup wants to “correct some typographical errors [and] to revise some combinations to add overlooked claims….” (ECF No. 347 at 8.) These proposed additions include significantly expanding the combinations of previously disclosed prior art as well as adding combinations for the new proposed references.

         Willis opposes Polygroup's motion, though does not devote any argument to the OPT and QS1 references. After careful consideration, the Court determines that Polygroup should only be permitted to amend its prior art statement to include the uncontested OPT reference. The remainder of Polygroup's motion is denied.

         A. Standard

         Early prior art disclosure serves the Court's and the parties' interest in efficiency by requiring parties to develop their infringement theories early in the case.

Requiring parties to identify and commit to theories of liability early serves to focus discovery and to advance the efficient disposition of the case. The nature of a patent infringement claim or invalidity defense encourages strategies to delay producing information through discovery or otherwise until the opposing side has disclosed the basis for its claims, contributing to lengthy delays and high costs. One approach is for the court to require the parties to submit detailed statements of their claims and defenses early in the litigation either at the outset of the case, as part of a discovery scheduling order, or, where the accused product is unavailable or otherwise not subject to examination, following limited discovery.

BreathableBaby, LLC v. Crown Crafts, Inc., No. 12-cv-94 (PJS/TNL), 2014 WL 3928526 at *3 (D. Minn. Aug. 12, 2014) (quoting 26 Fed. Proc., L.Ed. § 60:1156 Pretrial Conferences and Orders). Because requiring early prior art statements is intended to crystalize parties' theories of the case, the courts' approach to motions to amend them is “decidedly conservative.” Id.

         In order to amend a prior art statement to add references, the proponent of the motion must demonstrate three things: (1) that the proposed additional references “were not, and could not reasonably have been, located earlier”; (2) the proposed references are not cumulative of prior art already included in the statement; and (3) the proponent's prejudice if leave is denied outweighs the prejudice that the non-moving party would face if the motion was granted. Multi-Tech Systems, Inc. v., Inc., No. 00-1540 (ADM/RLE), 2002 WL 27141 at *3 (D. Minn. Jan 8, 2002); see also Pretrial Scheduling Order, ECF No. 34 (restating the elements and requiring them for amendment of a prior art statement). In this case, the Court also required the proponent of the motion to demonstrate good cause. Pretrial Scheduling Order, ECF No. 34; see also Solutran, Inc. v. U.S. Bancorp, No. 13-cv-2637 (SRN/BRT), 2016 WL 7377099 at *3 (D. Minn. Dec. 20, 2016) (“As a general matter, courts require a showing of ‘good cause' before allowing late amendments to invalidity contentions.”). Although the scheduling order did not specifically define good cause, courts generally consider five factors when determining if such a standard is met: (1) whether the moving party acted with diligence; (2) the importance and relevance of the proffered new prior art; (3) whether the motion is motivated by “gamesmanship”; (4) how difficult it is to locate the prior art; and (5) prejudice to the opposing party. Id.

         B. ...

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