United States District Court, D. Minnesota
Katherine Menendez United States Magistrate Judge
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.
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.
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).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.)
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. 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.
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.
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.
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. Dialpad.com,
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