This is part of a series of articles discussing recent orders of interest issued in IP cases by the United States District Courts in the Southeast

In Electrolysis Prevention Solutions LLC v. Daimler Truck North America LLC, No. 3:21-cv-00171-RJC-WCM (W.D.N.C. Nov. 14, 2023), Magistrate Judge Metcalf denied Defendant Daimler's motion to exclude testimony and evidence in a patent infringement case. The court also denied Daimler's motion to strike Plaintiff Electrolysis Prevention Solutions, LLC's ("EPS") supplemental expert opinions.

The suit concerns an improvement on radiator structures to help prevent corrosion in the cooling systems of motor vehicles. After the court issued its Markman order, construing several terms for the patent-in-suit, the court granted leave for Daimler to update its invalidity contentions based on two prior art references and extended expert discovery. After the close of expert discovery, Daimler filed several motions; the instant order addressed two of them.

Daimler first moved to exclude two types of testing conducted by EPS's expert and the opinions derived thereof, contending that the testing and opinions were either unreliable or irrelevant under Federal Rule of Evidence 702. Specifically, Daimler contended EPS's "resistivity" testing was unreliable because it significantly departed from the scientifically acceptable standard as defined by the American Society for Testing and Materials (ASTM). Daimler also contended EPS's "benchtop" testing was irrelevant because it failed to model the actual conditions in the radiator. The court disagreed, noting that Daimler, despite disagreeing with the conclusions, was able to replicate the "resistivity" and "benchtop" tests. The court also noted that the benchtop testing was designed to explore how introduction of a sacrificial anode could affect stray current. The court explained that Rule 702 only requires a preponderance of the evidence that the expert opinion bears adequate indicia of reliability, not correctness of the opinions. The court was not persuaded that the testing or the expert opinions should be excluded and denied Daimler's motion to exclude.

Daimler also moved to strike EPS's supplemental expert report served on the last day of the extended expert discovery as untimely under Federal Rule of Civil Procedure 37(c)(1). Daimler contended that the supplemental report either contained "new and improved" opinions based on Daimler's "benchtop" testing as an attempt to "avert summary judgment" or espoused "additional" opinions regarding one of the prior art references. In determining whether any violation is justified or harmless, the court considered the following factors:

  • the surprise to the party against whom the witness was to have testified;
  • the ability of the party to cure that surprise;
  • the extent to which allowing the testimony would disrupt the trial;
  • the explanation for the party's failure to name the witness before trial; and
  • the importance of the testimony.

In reviewing the factors, the court noted that EPS's supplemental expert report was timely disclosed within the court's allotted extended discovery. Regarding the "new and improved" opinions, the court found that any opinion concerning the "benchtop" testing, which Daimler's testing was intending to mimic, was previously disclosed in an earlier deposition. Additionally, EPS's expert was only commenting on previous testing Daimler disclosed almost a month prior—not any new testing the expert himself performed. And regarding the "additional" opinions, the court further found that Daimler's expert already submitted a supplemental declaration that responded to those opinions. Accordingly, the court denied Daimler's motion to strike EPS's supplemental expert report.

In Aqua EZ, Inc. v. Resh, Inc., No. 1:23-cv-00790-MLB (N.D. Ga. Nov. 20, 2023), Judge Brown addressed a discovery dispute related to Defendant Resh, Inc.'s document production in a patent infringement case. The court also ordered supplemental briefing to explain certain requests in further detail.

Plaintiff Aqua EZ, Inc. filed an action seeking declaratory judgment that it does not infringe any of Resh's patents regarding poles used to clean swimming pools. Resh counterclaimed that Aqua infringes two of those patents. The parties filed a notice of discovery dispute in which Aqua (1) requested that the court compel Resh to produce broad categories of documents (including information on Resh's products not related to the patents-in-suit, "uncorroborated" prior art, and Resh's pending patent applications), and (2) accused Resh of refusing to search for responsive emails until the court enters an electronically-stored information (ESI) order while simultaneously delaying efforts to agree on an ESI order. Resh countered by stating it has produced all relevant, non-public, non-privileged documents.

Regarding the first issue, the court "largely agree[d] with Resh's positions," stating that there was no evidence Resh withheld documents and finding that Resh was not required to produce uncorroborated prior art. The court did not see the relevance in Resh's swimming-pool products not covered by the patents-in-suit but invited Aqua to submit a supplemental brief describing their relevance. For Resh's pending applications, the court ordered supplemental briefing on whether Resh's interest in the secrecy of those applications outweighs the relevance of them, noting that it was Resh's burden to show why the applications are not discoverable.

On the second issue, the court ordered Resh to promptly engage Aqua in drafting a proposed ESI order so that Resh can produce the requested emails.

In Patent Armory Inc. v. Cruise America, Inc., No. 6:23-cv-2244-WWB-LHP (M.D. Fla. Nov. 27, 2023), Judge Berger dismissed Plaintiff Patent Armory's complaint for patent infringement sua sponte.

Patent Armory filed a complaint against Defendant Cruise America on November 20, 2023, alleging infringement of five patents. In its 12-page complaint, Patent Armory asserted five counts of patent infringement—one count for each asserted patent. Each count included allegations of direct infringement, and three counts also included allegations of induced infringement. Each count also incorporated by reference all prior paragraphs of the complaint, including the paragraphs from prior counts.

On the court's own review of the complaint, the court found it to be an impermissible "shotgun" pleading. In its order, the court outlined the four types of shotgun pleadings that the Eleventh Circuit has held to be improper:

  • a complaint containing multiple counts where each count adopts the allegations of all preceding counts;
  • a compliant that is replete with conclusory, vague, and immaterial facts not obviously connected to any particular cause of action;
  • a complaint that does not separate each cause of action or claim for relief into different counts; and
  • a complaint that asserts multiple claims against multiple defendants without specifying which of the defendants are responsible for which acts or which of the defendants the claim is brought against.

The court determined that Patent Armory's complaint fell into the first and third categories of impermissible shotgun pleadings. The court noted that each count of the complaint reincorporated by reference every allegation of the entire complaint, making "it virtually impossible to discern which of the facts alleged supports each claim." The court also noted that each count "improperly lump[ed] claims for direct . . . and induced infringement in several counts." Because Patent Armory's complaint was an impermissible shotgun pleading, the court dismissed the complaint with leave for Patent Armory to amend the complaint to correct the deficiencies.

Patent Armory filed an amended complaint on December 4, 2023, to address the deficiencies identified by the court. In the amended complaint, Patent Armory changed the first paragraph of each count to incorporate by reference only the relevant background paragraphs of the complaint rather than all prior paragraphs of the complaint. The amended complaint also split the allegations of direct and induced infringement into separate counts, for a total of eight counts. As of the publication of this blog, the court has taken no action on Patent Armory's amended complaint.

In BTL Industries, Inc. v. Nextwellness USA LLC, No. 6:22-cv-1477-WWB-EJK (M.D. Fla. Nov. 29, 2023), Magistrate Judge Kidd, in a patent infringement case, denied without prejudice Defendant Nextwellness USA LLC's motion for leave to file a third-party complaint against the manufacturer of its allegedly infringing product.

Plaintiff BTL Industries, Inc. accused Nextwellness's EMSCULPT® aesthetic body-contouring device of infringing several patents. Eight months after the deadline to add parties or amend pleadings, Nextwellness moved for leave to file a third-party complaint against CTN Cryotech Plc, the manufacturer of the accused device, asserting that CTN has a duty to defend and indemnify Nextwellness for BTL's claims. Nextwellness attempted to show "good cause" to modify this deadline under Federal Rule of Civil Procedure 16(b)(4) by arguing that it spent the preceding eight months negotiating with CTN directly, attempting to reach an agreement without complicating the litigation. The court declined to decide whether such efforts amounted to good cause. Instead, the court found that adding CTN as a third party would require modifying discovery and dispositive motion deadlines and, thus, the scheduled trial term. The court noted that it only grants motions to extend the trial term upon a showing of manifest injustice, not demonstrated by Nextwellness's motion. The court concluded by stating that any renewed motion should address all remaining deadlines and present a realistic pretrial timeline.

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