United Construction Products, Inc. v. Tile Tech, Inc.
843 F.3d 1363
Fed. Cir.2016Background
- United Construction Products (United) sued Tile Tech for infringing U.S. Patent No. 8,302,356 (support pedestal with anchoring washer). The case was in the Central District of California.
- United served discovery; Tile Tech repeatedly missed deadlines, produced deficient responses, failed to produce documents, and delayed meet-and-confers despite extensions and promises to supplement.
- The District Court issued an Order to Compel (including monetary sanctions) and warned that default judgment could follow if Tile Tech did not comply by the deadline; Tile Tech did not comply.
- Tile Tech eventually produced limited, belated discovery, including disclosure that it had destroyed a mold for a notched washer (spoliation); it also failed to timely respond to an amended complaint asserting unfair competition.
- The District Court entered default judgment, awarded relief on patent and unfair-competition claims, and issued a permanent injunction; Tile Tech appealed.
Issues
| Issue | Plaintiff's Argument (United) | Defendant's Argument (Tile Tech) | Held |
|---|---|---|---|
| Whether default judgment as a sanction for discovery violations was proper | Court should impose default because Tile Tech willfully and repeatedly violated discovery orders, prejudicing United and the Court’s docket | Tile Tech urged the Court to use lesser sanctions, blamed counsel unfamiliarity and sought more time; denied bad faith findings | Affirmed: Ninth Circuit applied Malone factors and upheld default—four factors favored dismissal and willfulness/fault satisfied the standard for sanctions |
| Whether the District Court adequately considered Malone factors (availability of lesser sanctions, public interest, docket management, prejudice, merits) | Factors support dismissal given chronic noncompliance, spoliation, and lack of assurance about factual record | Tile Tech argued dismissal was too severe; alternatives available and public policy favors disposition on merits | Affirmed: Court sufficiently considered factors; warnings and Order to Compel made alternatives inadequate |
| Whether willfulness/bad faith was required to support default | Willfulness or fault suffices; counsel’s conduct attributable to Tile Tech; spoliation shows culpability | Tile Tech argued absence of bad faith and that failures stemmed from counsel’s unfamiliarity | Affirmed: Willfulness/fault standard met; conduct not shown to be outside control of litigant |
| Whether the permanent injunction was overbroad (scope, mold surrender, prohibition on using images) | Injunction tailored to prohibit infringement and substantially similar devices, surrender of molds prevents re-creation of infringing parts, and marketing ban targets misleading uses | Tile Tech argued the injunction swept in non-infringing, substantially similar products; surrender of molds and blanket marketing prohibition were overbroad | Affirmed: Injunction complies with Rule 65(d); term “substantially similar” consistent with Federal Circuit standards; molds surrender appropriate given spoliation and notched washer’s importance; marketing restriction read to allow truthful comparative use |
Key Cases Cited
- Malone v. United States Postal Service, 833 F.2d 128 (9th Cir. 1987) (multi-factor test for dismissal/default as discovery sanction)
- Fjelstad v. American Honda Motor Co., 762 F.2d 1334 (9th Cir. 1985) (willfulness/fault suffices to support severe discovery sanctions)
- International Rectifier Corp. v. IXYS Corp., 383 F.3d 1312 (Fed. Cir. 2004) (injunctions may bar devices not more than colorably different from adjudicated devices)
- TiVo Inc. v. EchoStar Corp., 646 F.3d 869 (Fed. Cir. 2011) (two-step test for enforcing injunction against newly accused products)
- Granny Goose Foods, Inc. v. Brotherhood of Teamsters, 415 U.S. 423 (1974) (Rule 65 requires injunctions to state reasons and describe prohibited acts with precision)