RAVIN CROSSBOWS, LLC v. HUNTER’S MANUFACTURING COMPANY, INC. d/b/a TENPOINT CROSSBOW TECHNOLOGIES
CASE NO. 5:23-cv-598
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF OHIO EASTERN DIVISION
JUDGE SARA LIOI
March 6, 2024
Before the Court is the motion of the plaintiff, Ravin Crossbows, LCC (“Ravin”), to strike supplemental invalidity contentions provided by defendant Hunter’s Manufacturing Company, Inc. d/b/a TenPoint Crossbow Technologies (“TenPoint”). (See Doc Nos. 139 (Brief in Support), 141 (Brief Regarding Supplemental Invalidity Contentions).1) For the reasons set forth herein, the motion to strike TenPoint’s supplemental invalidity contentions is GRANTED IN PART.
I. BACKGROUND
This case comes by way of the District of Nevada. There, Ravin filed its initial complaint on December 17, 2021. (Doc. No. 1 (Complaint).) In its complaint, Ravin alleged that TenPoint infringed six patents, comprising a total of 134 claims. (See generally id.) On January 18, 2023, TenPoint filed both a motion to change venue (Doc. No. 17 (Motion to Change Venue)) and a motion to extend time to file a responsive pleading (Doc. No. 19 (Motion to Defer)). The motion
After the initial pleadings, the parties submitted a proposed scheduling order. (Doc. No. 34 (Disputed Discovery Plan).) Despite their disagreements in other areas, the parties agreed to several modifications of the standard scheduling order, including replacement of the District of Nevada’s Local Patent Rule 1-12 (id. at 6–7), which allowed amendments to contentions only for good cause. The parties, instead, proposed replacing Rule 1-12 with language similar to the Northern District of Ohio’s Local Patent Rule 3.10, which provides in relevant part:
The parties’ disclosures and responses may be amended or supplemented without leave of court until the Final Contentions are due under
L. P. R. 3.10(b)-(d) ; provided, however, that after submission of the exchange of claim terms underL. P. R. 4.1(c) , additional claims in the patent(s) in suit may not be asserted without obtaining leave from the Court for good cause shown.
The District of Nevada’s scheduling order did not include either the jointly proposed language replacing Rule 1-12 or the extension requested by TenPoint. (See Doc. No. 36 (Scheduling Order).) The scheduling order did, however, allow for modification by stipulation of the parties. (Id. at 3.) TenPoint understood this language, coupled with the court’s decision to leave the initial deadlines in effect, as a decision by the court to allow the parties to agree to amend their contentions until after the claim construction ruling. (See Doc. No. 141, at 3–4.) Ravin disputes this and, in fact, when Ravin sought to amend its initial infringement contentions on January 12, 2023, it did so only after seeking leave of the court. (See generally Doc. No. 63 (Motion for Leave).)
Nevertheless, apparently believing that such an agreement was in effect, TenPoint responded to Ravin’s May 23 infringement contentions with a set of initial contentions challenging only 6 claims on anticipation or obviousness theories. (Doc. No. 139-1 (LPR 1-8 Contentions).) TenPoint’s initial contentions reiterated its objections to the volume and complexity of the record and asserted that TenPoint “intends to supplement [its contentions] as its investigation progresses.” (Id. at 2–3.) Specifically, TenPoint’s initial contentions identified US Patent No. 20120125302 (“Stanziale I”) as anticipating several claims. (Doc. No. 139-1, at 18.) For instance, Stanziale I describes a crossbow with increased energy storage capacity owing to a design where the pulleys wind the “end portions of the [] flexible element” through an “angular displacement[.]” (Stanziale I, at 2:40–49.) This angular displacement allows for greater rotation than is typically achieved using a planar cam (Id. at 8:3–6.)
Shortly thereafter, the case was transferred to the Northern District of Ohio. (Doc. No. 74 (Order Granting Motion to Change Venue).) Upon arrival in Ohio, TenPoint filed a motion to stay the case pending review by PTAB. (Doc. No. 86, at 4.) Ravin opposed the motion to stay, arguing that it was unfairly prejudiced by further delays in an already long-running case. (See Doc. No. 88 (Opposition to Stay), at 5–9.) While the motion to stay was pending before the Court, PTAB granted TenPoint’s petition for inter partes review. (Doc. No. 97 (Notice of Inter Partes Review).) TenPoint notified the Court of the institution of inter partes review on July 12, 2023. (Id.) Ravin then reached out to TenPoint to discuss an agreement in which Ravin would voluntarily streamline its claims in exchange for TenPoint withdrawing its motion to stay. (Doc. No. 98-1 (July 13 Email), at 2–3.) In its July 14, 2023, response to TenPoint’s notice of inter partes review, Ravin
The parties briefed for claim construction, which was set for hearing on November 15, 2023. (Doc. No. 106 (Case Management Plan).) On October 12, 2023, thirteen days after the parties finished briefing claim construction, and over fifteen months after filing its initial contentions, TenPoint served Ravin with supplemental contentions. (Doc. No. 139-1). These contentions introduced thirty-three new invalidity claims under anticipation or obviousness theories, and new allegations of inequitable conduct. (Id.) Of the thirty-three new claims, twenty-four were based, at least in part, on Stanziale I. (Doc. No. 141-1, at 3.) The remainder referenced prior art that had not been part of the initial contentions. (Id. at 2–5.)
Ravin filed a notice of discovery dispute on November 3, 2023, requesting the Court’s assistance in getting TenPoint to withdraw the supplemental contentions. (Doc. No. 137 (Notice of Discovery Dispute).) The Court conducted a status conference on November 8, 2023. (Minutes of Proceedings [non-document], 11/8/2023.) The claim construction hearing was moved to November 21, 2023, and the parties were directed to file simultaneous briefs on the issue by November 10, 2023. (Id.; see also Order [non-document], 11/9/2023.)
The Northern District of Ohio’s Local Patent Rules outline the procedures for serving and modifying invalidity contentions. The Northern District of Ohio’s Local Patent Rules, unlike those in some other districts, permit amending or supplementing contentions and responses without leave or showing of good cause until final contentions are due.
That scenario, however, is necessarily limited. For example, a late amendment may be permissible where a party seeks to “refine [its] infringement theories in order to conform to the Markman ruling.” Fast Felt Corp. v. Owens Corning Roofing & Asphalt, LLC, No. 3:14-cv-803, 2017 WL 4876789, at *1 (N.D. Ohio July 26, 2017). But the parties may not use the Local Rules simply to “spring entirely new theories that potentially disrupt the case schedule.” Id. This is, in part, because “local rules may not displace the Federal Rules of Civil Procedure.” Wilson v. City of Zanesville, 954 F.2d 349, 352 (6th Cir. 1992) (citation omitted). The Local Patent Rules provide as much: Rule 3.10 instructs that all contentions are to be given the same binding effect as an interrogatory made under Federal Rule 33.
As a form of interrogatory, contentions in a patent case are governed by Rule 26 of the Federal Rules of Civil Procedure. See SPX Corp. v. Bartec USA, LLC, 574 F. Supp. 2d 748, 754–55 (E.D. Mich. 2008).
A. Timeliness of Disclosures.
What makes a disclosure “timely” is ill-defined. The most recent Sixth Circuit case to speak on the subject articulated several possible tests, mostly concerned with when the disclosing party knew or should have known about the information, whether the time for discovery has passed, and if there were signs of gamesmanship in the disclosure. See Bisig v. Time Warner Cable, Inc., 940 F.3d 205, 218 n.7 (6th Cir. 2019). For example, the court in EEOC v. Dolgencorp, found that application of Rule 37 was inappropriate where “the party supplemented a disclosure or response within thirty-days of receiving the new information and did so before the close of discovery.” 196 F. Supp. 3d 783, 795–96 (E.D. Tenn. 2016). Other courts have taken more restrictive stances on untimely disclosures. See, e.g., Clearly Food & Beverage Co. v. Top Shelf Beverages, Inc., No. C13-1763, 2015 WL 1263339, at *3 (W.D. Wash. Mar. 18, 2015) (excluding evidence that could have been produced in initial disclosure if the disclosing party had conducted a “reasonable search”); Dayton Valley Investors, LLC v. Union Pacific R.R. Co., No. 2:08-cv-127, 2010 WL 3829219, at *3 (D. Nev. Sept. 24, 2010) (information is not timely disclosed where it is simply
The court in SPX found the defendant exhibited the type of gamesmanship sufficient to warrant sanctions where it sought to supplement boiler-plate contentions with newly disclosed invalidity contentions and prior art. 574 F. Supp. 2d at 756. In that case, the defendant submitted only bare assertions of invalidity in its original contentions. Id. at 750. The plaintiff responded with a motion to compel more complete responses. Id. But it was not until the defendant disclosed its expert reports that the plaintiff learned about new invalidity claims and prior art supporting them. Id. at 751. Applying
TenPoint’s disclosure is similarly untimely. First, the fact that TenPoint’s late amendments are theoretically permissible under the Northern District of Ohio’s Local Patent Rules does not make them timely under
While TenPoint may have supplemented its invalidity contentions prior to the close of discovery, it did so fifteen months after informing Ravin that it “intends to supplement” the original contentions. Over the course of those fifteen months, the parties: (1) briefed claim construction issues twice (Doc. No. 139, at 6), (2) they engaged in numerous discovery disputes (Doc. Nos. 111 (Letter Re: Discovery Dispute), 137), and (3) they briefed for inter partes review (see Doc. No. 97-1 (PTAB Institution Decision)). All the while, TenPoint maintains the “fantastic claim” that it took over 15 months to determine its true invalidity positions. (Doc. No. 141, at 4.) As with the defendant in SPX, TenPoint’s claim that it could simply sit back and wait over a year to supplement contentions that it knew to be incomplete defies common sense. Even under the relatively lax timeliness standard articulated in Dolgencorp, the late disclosure of information was only permissible because it occurred before discovery and because the parties turned over the information within thirty days of learning about it. 196 F. Supp. 3d at 795. Here, TenPoint knew its responses were incomplete for over fifteen months. Its decision to wait to finalize its contentions until claim construction was fully briefed and it received a covenant not to sue from Ravin is indicative of the exact type of gamesmanship that Rule 26 seeks to prevent.
That Ravin may have been aware of the prior art cited by TenPoint does not alleviate TenPoint’s obligation to timely disclose the prior art as part of its invalidity contentions. Rule 26 requires the producing party to timely correct disclosures if the “corrective information has not otherwise been made known” to the party seeking discovery.
Invalidity contentions, unlike a fact witness, serve dual functions. Datatrak Int‘l, Inc., 2015 WL 12734894, at *3. They “act as interrogatories” in the context of discovery, but they also serve as notice of both parties’ positions on infringement. Id. In this case, Ravin did not receive notice of TenPoint’s actual invalidity positions until well over a year after TenPoint knew it had submitted deficient responses. Mere knowledge of prior art on the part of Ravin does not provide an “explanation of why the prior art renders the asserted claim obvious,” nor does it provide a “chart identifying specifically where each limitation of each asserted claims are found” as required by the Local Rules.
Having determined that TenPoint’s supplemental contentions are not timely, the Court must next decide whether its failure to disclose is “substantially justified or is harmless.” See Howe v. City of Akron, 801 F.3d 718, 748 (6th Cir. 2015) (quotation marks omitted). The Sixth Circuit uses a five-factor balancing test to determine whether the failure to disclose was “substantially justified or is harmless” under
(1) the surprise to the party against whom the evidence would be offered; (2) the ability of that party to cure the surprise; (3) the extent to which allowing the evidence would disrupt the trial; (4) the importance of the evidence; and (5) the nondisclosing party’s explanation for its failure to disclose the evidence.
Id. (quoting Russell v. Absolute Collection Servs., Inc., 763 F.3d 385, 396–97 (4th Cir. 2014)). “[The] Advisory Committee Notes to [the] 1993 Amendments (including
Here, it is helpful to divide the late disclosures into three camps: those invoking previously undisclosed prior art, those based on Stanziale I, and new claims alleging inequitable conduct. Claims based on previously undisclosed prior are found in Sections III.C. through III.M. of TenPoint’s supplemental disclosures. (Doc. No. 141-1, at 3–8.) The Stanziale I claims are those identified in section III.A. (Id. at 3.) Inequitable conduct claims are found in Section VI. (Id. at 9–16.) The Court will address each set of supplemental claims in turn.
The claims found in Sections III.C. through III.M. of TenPoint’s supplemental contentions are neither harmless nor substantially justified. Factor one of the Howe analysis considers surprise to the non-disclosing party. As to these claims, which are based upon previously undisclosed art, the surprise is high. Courts throughout the circuit have found this element weighs in favor of granting a motion to strike where one party is late to disclose information unknown to the other. See, e.g., EQT Prod. Co. v. Magnum Hunter Prod., Inc., 768 F. App’x 459, 468–69 (6th Cir. 2019). This is especially so where discovery “has been a massive, multi-year undertaking.” Clark v. Louisville Jefferson Cnty. Metro Gov’t, No. 3:17-cv-419, 2023 WL 2316205, at *8 (W.D. Ky. Mar. 1, 2023). Surprise may be alleviated where the requesting party has access to relevant information, but this is not always the case. For example, the court in EQT found that there was adequate evidence of surprise when the plaintiff delayed turning over data relevant to damages calculation even though the defendant had access to the same data in its files. EQT Prod. Co., 768 F. App’x at 468–69. While the defendant in that case may have had access to the data, it was not “aware of how [the plaintiff] processed the raw data, which of the changes . . . [the plaintiff] took issue with,” or how the plaintiff used its software to calculate damages, until after taking depositions. Id. Late disclosure thus deprived the defendant of the “meaningful opportunity” to develop discovery. Id. at 469.
TenPoint now argues there is no real surprise because Ravin knew of at least some of the undisclosed prior art before receiving its supplemental contentions. (Doc. No. 141, at 9.) But, as discussed above, Ravin did not receive an explanation of how this prior art fit into TenPoint’s invalidity contentions as it would have under a proper disclosure pursuant to
Factor two and three also weigh against admitting new claims based on undisclosed prior art. Factor two evaluates the non-disclosing party’s ability to cure surprise. Factor three asks whether the late disclosures risk potential disruptions to trial. Late disruptions to critical motions are disfavored because they often force the requesting party “to bear the effort and expense necessary to cure [the disclosing party’s] failure to disclose.” EQT Prod. Co., 768 F. App’x at 469. Permitting this inequitable burden “reward[s] [the disclosing party] for its untimeliness and does nothing to deter similar conduct from future litigants.” Id. Ravin has streamlined its claims, signing a covenant not to sue that it maintains was predicated on TenPoint’s original set of contentions. At least as to the claims based on undisclosed prior art, TenPoint’s offer to release Ravin from its covenant not to sue does little to lessen either Ravin’s burden to cure or the potential disruptions to the tentative trial date that such late-added claims present. Allowing in new prior art would likely necessitate a new round of claim construction briefing. (See Doc. No. 139, at 6.) Additional claim construction briefing risks further delaying the case, which has been pending since December 17, 2021, and jeopardizing the tentative trial date. Indeed, Ravin has previously argued that it is prejudiced by further delays on multiple occasions. (Id. at 9–10; see also Doc. No. 88 (Opposition to Stay), at 5–9.) Allowing claims based on new prior art would only heighten that
Factor four considers the importance of the evidence. Both parties indicate that the evidence is important in their briefs. (Doc. No. 139, at 6; Doc. No. 141, at 11.) But “[t]he importance of the evidence . . . ‘can cut both ways.’” Presidio, Inc. v. People Driven Tech., Inc., No. 2:21-cv-05779, 2023 WL 5162657, at *4 (S.D. Ohio Aug. 11, 2023) (quoting Bisig, 940 F.3d at 220). That is to say, “[t]he more important the proof, the greater effect the preclusion, but also the greater the harm in tardy disclosure.” Bisig, 940 F.3d at 220 (quoting EQT Prod. Co. v. Magnum Hunter Prod., Inc., No. 5:16-CV-150, 2017 WL 2295906, at *5 (E.D. Ky. May 25, 2017)). While the supplemental contentions in this case may be important to TenPoint’s position, that importance does not excuse TenPoint’s lack of diligence, or the harm Ravin would suffer in inserting a range of invalidity claims based on undisclosed prior art at this late stage. Even allowing that TenPoint’s untimely supplement is important to its positions, the prejudice to Ravin that would result from such an untimely disclosure makes the fourth factor neutral.
Finally, factor five looks to “the nondisclosing party’s explanation for its failure to disclose the evidence[.]” Howe, 801 F.3d at 748. This factor weighs against a finding that the failure to disclose was substantially justified or harmless. TenPoint provides two justifications for its late disclosures. First, TenPoint argues that it was under the impression that the parties agreed to allow supplemental disclosures. (Doc. No. 141, at 4.) This explanation is belied by the fact that Ravin sent TenPoint a letter shortly after receiving the initial invalidity contentions in which Ravin both pointed to perceived deficiencies in the contentions and clearly stated that it did not agree to allow
Four out of five factors weigh in favor of striking the claims based on undisclosed prior art found in Sections III.C. through III.M. Accordingly, Ravin’s motion to strike the claims in Sections III.C. through III. M. is granted.
2. Stanziale I Claims
Unlike those based on new prior art, TenPoint’s contentions based on Stanziale I are harmless. (Doc. No. 141-1, at 3.) First, Ravin should not have been surprised to see new claims based on Stanziale I. The defendants in Presidio could not demonstrate surprise when seventy-six new trade secrets were disclosed on the last day of discovery, eleven months after initial disclosures had been made. 2023 WL 5162657, at *3. The court determined that, while the disclosure was not timely, the surprise was minimal because “all the alleged trade secrets are based on documents produced by [the defendant].” Id. This was in contrast to cases in which there was
Ravin has had multiple opportunities to cure any surprise it did suffer as a result of the new Stanziale I claims. Ravin contends that adding the new contentions would necessitate a new round of claim construction that addresses the construction of “power cable take-up journal,” “power cable journal,” “wrap onto,” and “displaced . . . away.” (Doc. No. 139, at 6.) But central to the factor two inquiry is whether the moving party had prior opportunities to rectify the discovery issue. Stephenson v. Fam. Sols. of Ohio, Inc., No. 1:18-cv-2017, 2022 WL 279857, at *9 (N.D. Ohio Jan. 31, 2022). Stanziale I disclosed a cam design with helical journals that store additional power. TenPoint’s petition for inter partes review clearly set out its belief that Stanziale I anticipated the cam design disclosed in the patents-in-suit in this case. (Doc. No. 86-1, at 28–36.) Still, Ravin declined the chance to construct terms clearly related to the cam design, namely “power cable take-up journal” and “power cable journal(s)”, that it now says may require additional construction. (See Doc. No. 126 (L.P.R. 4.5), at 2.) In fact, the parties submitted agreed upon constructions for the terms “power cable take-up journal” and “power cable journal(s)” that have since been adopted by the Court. (Id; see also Doc. No. 148 (Memorandum Opinion and Order), at 6.) The parties agreed to these constructions with knowledge that TenPoint alleged
The Stanziale I claims do not risk substantial disruption to agreed upon tentative trial date in this long-pending case. Unlike the claims involving new prior art, it is unlikely that the contentions based purely on Stanziale I would result in significant delay at the claim construction stage because Ravin was already aware of TenPoint’s general positions relative to Stanziale I. (See Doc. No. 139-1, at 18.) As explained above, the Stanziale I has been a part of the record since the outset of this case, and Ravin has had numerous opportunities to address its impact at claim construction. As such, there is little need for additional claim construction or further delays pertaining to Stanziale I. The court in Stephenson found that there was little risk of disrupting trial as the trial date was over 10 months out. 2022 WL 279857, at *9. This case is currently set for trial on October 28, 2024, and a final pre-trial conference is to be held on September 20, 2024. (Doc. No. 106 (Case Management Plan), at 6.) Beyond that, no dates have been set past the claim construction. Factor three weighs in favor of denying the motion to strike.
Once again, factor four can cut both ways. See Presidio, 2023 WL 5162657, at *4. In this case, Ravin suffers little prejudice in admitting new claims based on Stanziale I. Unlike the claims based on previously undisclosed art, the Stanziale I claims would not result in significant delay, surprise, or prejudice to Ravin. Additionally, Stanziale I has been central to TenPoint’s positions since the early stages of this case, indicating its importance to the parties’ positions. (Doc. No. 139-1, at 18.) There is a “strong preference for trials on the merits in federal courts” Presidio, 2023 WL 5162657, at *4. Given the strong preference for deciding issues on the merits, factor four weighs against granting the motion to strike as to the Stanziale I claims.
3. Inequitable Conduct Claims
TenPoint’s supplemental invalidity contentions also contained allegations referencing a potential inequitable conduct counterclaim. (Doc. No. 141-1, at 9–16.) Inequitable conduct was never pled as a counterclaim in this case, though TenPoint has included references to inequitable conduct in its earlier contentions. (Doc. No. 139-1, at 35.) TenPoint inquired about amending its pleadings to add an inequitable conduct claim at the case management conference held on August 25, 2023. (Minutes of Proceedings [non-document], 8/25/2023.) At that time, the Court held that it would not allow the parties to amend their pleadings, further indicating that it did not believe TenPoint had sufficiently developed a potential inequitable conduct counterclaim. (Doc. No. 141, at 11.) Nothing has changed in the interim.
Claims of inequitable conduct are subject to
The facts of Exergen prove a good guide. In Exergen, the defendant sought leave to amend its initial invalidity contentions to add inequitable conduct as an affirmative defense and counterclaim. Id. at 1317. The court denied the motion, finding that the proposed pleading failed to allege inequitable conduct with the requisite particularity. Id. at 1317. The Federal Circuit upheld this ruling, holding that the defendant’s general claims that the plaintiff “was aware” of prior art did not provide “factual basis to infer that any specific individual . . . knew of the specific [prior art.]” Id. at 1330. Continuing, the Federal Circuit found that “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” Id. (citation and emphasis omitted). Moreover, the fact that the defendant pled deceptive intent upon information and belief did not obviate the requirement that it plead “specific facts upon which the belief is reasonable based.” Id. at 1330–31. This was despite the fact that the plaintiff had excluded relevant prior art from a patent prosecution after including it when prosecuting a prior patent. Id.
Here, TenPoint’s supplemental responses, even if they appeared in a proper pleading, do not present sufficient factual allegations to support the inference that Ravin withheld information knowingly or with the specific intent to deceive the USPTO. TenPoint alleges that Karl Scwappach
These allegations are purely speculative. They convey what TenPoint believes a person in Schwappach’s position “would” have done or should have identified. But the standard for scienter in pleading inequitable conduct requires facts that raise the inference of actual knowledge. Exergen Corp., 575 F.3d at 1328–29. It is not enough to allege beliefs about what an individual likely would have done. And, even if TenPoint could show that Schwappach had actual knowledge that the prior art could be invalidating, it nevertheless fails to allege any facts that show deceptive intent. Like the plaintiff in Exergen, Ravin did not disclose some allegedly material references in early patents, but it did disclose them in others. (Doc. No. 141-1, at 14–17.) The court in Exergen found that an allegation that a material reference was simply withheld is insufficient because it does not “plausibly suggest any ‘deliberate decision to withhold a known material reference[.]’” Id. TenPoint’s allegations that Ravin withheld some disclosures, or “buried” others, does not plausibly suggest a deliberate decision either. TenPoint’s inequitable conduct allegations fail as a result. Ravin’s motion to strike is granted as to inequitable conduct claims found in section VI.
For all the reasons set forth herein, Ravin’s motion to strike the supplemental invalidity contentions is GRANTED IN PART, as follows:
It is granted as to the undisclosed prior art (Sections III.C. through III.M.);
It is denied as to claims based on Stanziale I (Section III.A.); and
It is granted as to inequitable conduct claims (Section VI).
IT IS SO ORDERED.
Dated: March 6, 2024
HONORABLE SARA LIOI
CHIEF JUDGE
UNITED STATES DISTRICT COURT