Skyline Steel, LLC v. PilePro, LLC
101 F. Supp. 3d 394
| S.D.N.Y. | 2015Background
- Skyline Steel sues PilePro seeking a declaration of noninfringement of PilePro's '543 Patent and that the patent is invalid, plus Lanham Act and state-law damages.
- The '543 Patent covers a method of forming sheet pile interlocks with material accumulation localized to the interlock region; Hermes I is the earlier patent distinguished during prosecution.
- Skyline distributes ArcelorMittal's HZM System, which PilePro claimed may infringe the '543 Patent; PilePro warned Skyline's customers and posted on the website that the HZM System infringes PilePro's patent.
- Parties filed multiple motions; Skyline moved for partial summary judgment on noninfringement and for spoliation sanctions; PilePro opposed and defended its conduct.
- The court construed key terms, granted noninfringement for most components, and denied infringement as to listed King Piles under Skyline's theory; the Madonna letter issue remains disputeable for bad faith.
- The court granted spoliation sanctions for failure to preserve PaperTrail logs and ordered costs and other sanctions; seal requests were partially granted.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does the '543 Patent cover Skyline's listed King Piles? | Skyline argues the patent excludes material accumulation beyond the interlock section; King Piles fall outside infringement. | PilePro contends some interpretation could extend the section to include broader material accumulation with the interlock. | No infringement by King Piles; other components noninfringing. |
| Whether PilePro acted in bad faith in its infringement communications and related claims. | Skyline contends PilePro's conduct was objectively baseless due to prosecution disclaimer and the Madonna letter. | PilePro argues its positions were reasonable under its claim construction and did not act with objective baselessness. | Bad faith not proved for most claims; Madonna letter raises jury question; overall, PilePro entitled to summary judgment on bad faith for all but Madonna letter claims. |
| Whether spoliation sanctions are warranted for failure to preserve PaperTrail logs and Google Analytics data. | Skyline alleges spoliation of evidence bearing on site-visitor data; sanctions warranted to deter spoliation and restore status quo. | PilePro argues no duty to preserve Google Analytics data (data did not exist) and PaperTrail logs were overwritten; sanctions unnecessary. | Spoliation sanctions granted for PaperTrail data; Google Analytics data not preserved but not sanctionable as it did not exist; monetary sanctions awarded; lesser sanction framework applied. |
| Do the sealing requests survive public-access presumptions? | Exhibits contain confidential pricing and negotiations; sealing justified. | Requests rely on confidentiality agreements, which is not sufficient; some materials denied. | Exhibits C, F, G sealed in full; Exhibit 12 partially sealed (pricing redacted); remaining sealing requests denied. |
| What is the court's overall disposition on summary judgment and associated relief? | Skyline seeks broad noninfringement relief and sanctions. | PilePro seeks judgment in its favor on bad faith and opposes most sanctions. | Skyline's partial summary judgment granted on noninfringement; spoliation sanctions granted; PilePro granted summary judgment on bad faith except Madonna letter claims. |
Key Cases Cited
- Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372 (Fed. Cir. 2008) (claim construction governs infringement analysis)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (Supreme Court 1986) (genuine disputes of material fact require trial)
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claim terms defined by ordinary meaning in context of specification and prosecution history)
- MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907 (Fed. Cir. 2012) (objectively baseless litigation and prosecution-disclaimer considerations for exceptional cases)
- Powell v. Home Depot USA, Inc., 663 F.3d 1221 (Fed. Cir. 2011) (objective versus subjective components of bad faith; court as to objective prong when appropriate)
- Zubulake v. UBS Warburg LLC, 220 F.R.D. 212 (S.D.N.Y. 2003) (duty to preserve e-discovery evidence and litigation holds)
- In re Pfizer Inc. Sec. Litig., 289 F.R.D. 297 (S.D.N.Y. 2013) (preservation and relevance considerations for electronic evidence)
- Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (Supreme Court 2014) (rejected two-part test for 'exceptional' patent cases; affects good-faith analysis)