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Zest Ip Holdings, LLC v. Implant Direct Mfg., LLC

United States District Court, S.D. California

March 3, 2014

ZEST IP HOLDINGS, LLC, et al., Plaintiffs,
IMPLANT DIRECT MFG., LLC, et al. Defendants.


WILLIAM V. GALLO, Magistrate Judge.

On February 7, 2014, in response to the Court's suggestion of January 31, 2014, Defendants filed a Statement of Pending Discovery Issues. [Docket No. 366]. On February 21, 2014, Defendants submitted a letter application to the Court seeking to conduct additional discovery in this case. On February 26, 2014, Plaintiffs submitted a letter in opposition to Defendants' letter application.



Defendants contend that they have pending discovery matters before the Court that have yet to be resolved. A careful review of the docket indicates that there are no pending discovery matters before this Court. However, given the history of this litigation and the numerous pleadings which have been filed, it is perhaps understandable why Defendants may think there are unresolved disputes. But Defendants' mistaken belief does not justify allowing the discovery they now seek.

Defendants raised the present discovery issues in a Joint Statement Regarding Discovery, filed on May 17, 2013. [Docket No. 217]. A hearing was held regarding these discovery issues on May 29, 2013. [Transcript of May 29, 2013 hearing, Docket No. 228]. During the hearing, Defendants indicated that they intended to file several motions (to amend invalidity contentions and for a new Markman hearing) before Judge Curiel and were awaiting a ruling on a pending Motion For Reconsideration pertaining to the sufficiency of Plaintiffs' infringement contentions. [Transcript of May 29, 2013 hearing at 53-56][1]. The resolution of those motions would impact the discovery being sought by Defendants and accordingly, this Court took the matters under advisement pending the outcome of Judge Curiel's orders. [Transcript of May 29, 2013 hearing at 45, 11. 12-17; at 55, 11. 9-13]. Although the discovery matters were taken under advisement, it became evident to the Court in papers filed subsequently by the parties, or in orders issued by Judge Curiel, that the discovery in question had either taken place or would be conducted. The Court, having not heard from Defendants since May 2013 about the lack of ruling from this Court and having not received any objection about the lack of discovery from Plaintiffs, naturally assumed that the discovery had been conducted.

Defendants had the opportunity to conduct the discovery that is now being requested, when it was appropriate to do so. For whatever reason, they chose not to conduct the discovery or file timely objections to the discovery which was provided by Plaintiffs. The fact remains that the discovery requested by Defendants, which should have been, and could have been, accomplished much earlier in this litigation, if allowed to be conducted now, would seriously prejudice Plaintiffs, require enormous amounts of additional discovery, and seriously undermine the Court's calendaring of this already lengthy litigation.



Defendants have identified three topics about which they now seek discovery:

1. Plaintiffs' infringement contentions relating to the new internal connection GPS cap and liner and the basis for any such contentions; 2. The invalidity of Plaintiffs' patents; 3. Plaintiff's alleged damages regarding the new internal connection GPS cap and liner, including in the form of a Rule 30(b)(6) deposition. [Defendants' Statement of Pending Discovery Issues, Docket No. 366, at 3, 11. 8-9, 12, 15-16].

A. Defendants' Request To Conduct Additional Fact Discovery Into Plaintiffs' Infringement Contentions Is DENIED.

Patent infringement analysis involves essentially two steps: 1) claim construction; and 2) comparison of the properly construed claims with the accused product(s). Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1454 (Fed. Cir. 1998). Judge Burns, who was assigned this case before Judge Curiel, held a claim construction hearing on April 10, 2012 [Docket No. 88] and issued his Claim Construction Order on May 16, 2012. [Docket No. 99]. Immediately thereafter, Defendants filed a Motion For Reconsideration [Docket No. 100] which was denied by Judge Burns. [Docket No. 102]. Once Judge Burns construed the claim terms, the first part of the analysis was completed. As Plaintiffs' counsel has stated, the claim terms have not changed since April 10, 2012.[2]

As to the second part of the analysis, Defendants' entire argument to justify the request for additional discovery in this area is that Plaintiff has added an entirely "new" accused product in the litigation after the discovery cutoff. Defendants continue to characterize the "new" GPS internal male connection as an entirely new accused product and contends that Plaintiffs have changed their infringement theory. [Defendants' February 21, 2014 letter]. This is simply not the case and Defendants' persistent mischaracterization of the "new" GPS connection will not change its true nature. Judge Curiel, using language such as "the Court disagrees" and "the Court rejects, " has stated quite clearly that Plaintiffs' inclusion of a "new" GPS male internal connection is not an entirely new accused product. [Order, Docket No. 301 at 14, 11. 11-12, 24; at 15. 11. 1, 11]. Moreover, as ...

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