Simpson Strong-Tie Company, Inc. v. Oz-Post International, LLC

          ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT AND MOTION TO STRIKE Re: Dkt. Nos. 102, 104, 105, 106, 123, 124

          William H. Orrick United States District Judge.

         This case involves patents and products designed to serve as cost-effective alternatives to antique bolted hardware. Before me are cross-motions for partial summary judgment by declaratory judgment plaintiff Simpson Strong-Tie Company, Inc. (“Simpson”) and patent-owner and defendant Oz-Post International LLC dba OZCO Building Products (“OZCO”), along with OZCO's motion to strike portions of an expert report. For the reasons set forth below, I will grant partial summary judgment in favor of Simpson and deny OZCO's motion to strike.

         BACKGROUND

         The United States Patent and Trademark Office issued United States Design Patent Number D798, 701 (“the D'701 Patent” or “the design patent”) on October 3, 2017 and United States Patent Number 9, 957, 998 (“the '998 Patent” or “the utility patent”) on May 1, 2018. D'701 Patent, Declaration of J. Michael Thomas (“Thomas Decl.”)^[1] Ex. 2 [Dkt. No. 105-2]; '998 Patent, Thomas Decl. Ex. 1 [Dkt. No. 105-1]. The '998 Patent aims to simulate antique architectural hardware (like rivet, nail, and pin or nut, bolt, and washer connectors) with mounting hardware that is both easier to install and more cost effective. See '998 Patent 1:30-31, 53-56.

         OZCO asserts that Simpson's Hex Head washer and Structural Wood Screw (“the Accused Products”) infringe on its patents when they are used together. On March 26, 2019, I construed the '998 Patent, resolving the parties' disputes and adopting certain agreed constructions. See Claim Construction Order [Dkt. No. 86].

         On September 3, 2019, both parties moved for partial summary judgment. Simpson Motion for Partial Summary Judgment (“Simpson MSJ”) [Dkt. No. 102]; OZCO Motion for Partial Summary Judgment (“OZCO MSJ”) [Dkt. No. 105, 103-16 (unredacted)]. OZCO also filed a motion to strike. Motion to Strike Fred P. Smith Expert Report (“MTS”) [Dkt. No. 106]. I heard argument on October 23, 2019. Dkt. No. 128.

         LEGAL STANDARD

         I. SUMMARY JUDGMENT

         A. Generally

         Summary judgment on a claim or defense is appropriate “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). In order to prevail, a party moving for summary judgment must show the absence of a genuine issue of material fact with respect to an essential element of the non-moving party's claim, or to a defense on which the non-moving party will bear the burden of persuasion at trial. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the movant has made this showing, the burden then shifts to the party opposing summary judgment to identify “specific facts showing there is a genuine issue for trial.” Id. The party opposing summary judgment must present affirmative evidence from which a jury could return a verdict in that party's favor. Anderson v. Liberty Lobby, 477 U.S. 242, 257 (1986).

         On summary judgment, the court draws all reasonable factual inferences in favor of the non-movant. Id. at 255. In deciding the motion, “[c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge.” Id. However, conclusory and speculative testimony does not raise genuine issues of fact and is insufficient to defeat summary judgment. See Thornhill Publ'g Co., Inc. v. GTE Corp., 594 F.2d 730, 738 (9th Cir. 1979).

         B. Noninfringement

         Summary judgment of noninfringement requires a two-step analysis. “First, the claims of the patent must be construed to determine their scope. Second, a determination must be made as to whether the properly construed claims read on the accused device.” Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999) (internal citations omitted). “The determination of infringement, both literal and under the doctrine of equivalents, is a question of fact.” Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003); see also Kilopass Tech. Inc. v. Sidense Corp., No. 10-cv-02066-SI, 2012 WL 3545286, at *4 (N.D. Cal. Aug. 16, 2012). Because the ultimate burden of proving infringement rests with the patentee, an accused infringer may show that summary judgment of noninfringement is proper either by producing evidence that would preclude a finding of infringement, or by showing that the evidence on file fails to create a material factual dispute as to any essential element of the patentee's case. See Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001). “Summary judgment of noninfringement may only be granted if, after viewing the alleged facts in the light most favorable to the nonmovant and drawing all justifiable inferences in the nonmovant's favor, there is no genuine issue whether the accused device is encompassed by the patent claims.” Id. Direct infringement may be proven either by literal infringement or under the doctrine of equivalents. “Literal infringement requires the patentee to prove that the accused device contains each limitation of the asserted claim(s).” Bayer AG v. Elan Pharm. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). “If any claim limitation is absent from the accused device, there is no literal infringement as a matter of law.” Id.

         II. MOTION TO STRIKE

         A. Patent Local Rules

         “Patent Local Rule 3 requires patent disclosures early in a case and streamlines discovery by replacing the series of interrogatories that parties would likely have propounded without it.” ASUS Computer Int'l v. Round Rock Research, LLC, No. 12-CV-02099-JST, 2014 WL 1463609, at *1 (N.D. Cal. Apr. 11, 2014) (internal quotation marks and modifications omitted). The disclosure requirements of Rule 3 are designed “to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” Nova Measuring Instruments Ltd. v. Nanometrics, Inc., 417 F.Supp.2d 1121, 1123 (N.D. Cal. 2006). “They are also designed to provide structure to discovery and to enable the parties to move efficiently toward claim construction and the eventual resolution of their dispute.” Golden Bridge Tech. Inc v. Apple, Inc., No. 12-cv-04882-PSG, 2014 WL 1928977, at *3 (N.D. Cal. May 14, 2014) (internal quotation marks omitted).

         Patent Local Rule 3-1 requires that a party claiming patent infringement serve a “Disclosure of Asserted Claims and Infringement Contentions” no more than fourteen days after the initial case management conference. This disclosure must include “[e]ach claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted.” Patent L.R. 3-1(a). The party must also identify “where each limitation of each asserted claim is found within each Accused Instrumentality, ” and “[w]hether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents.” Patent L.R. 3-1(e).

         Patent Local Rule 3-3 requires parties accused of infringement to serve invalidity contentions. The invalidity contentions must identify “each item of prior art that allegedly anticipates each asserted claim or renders it obvious.” Patent L.R. 3-3(a). If obviousness is alleged, the invalidity contentions must contain “an explanation of why the prior art renders the asserted claim obvious, including an identification of any combinations of prior art showing obviousness.” Patent L.R. 3-3(b).

         “Given the purpose behind [these] disclosure requirements, a party may not use an expert report to introduce new infringement theories, new infringing instrumentalities, new invalidity theories, or new prior art references not disclosed in the parties' infringement contentions or invalidity contentions.” Verinata Health, Inc. v. Sequenom, Inc., No. 12-cv-00865-SI, 2014 WL 4100638, at *3 (N.D. Cal. Aug. 20, 2014) (internal quotation marks omitted). “Any invalidity theories not disclosed pursuant to Local Rule 3-3 are barred . . . from presentation at trial (whether through expert opinion testimony or otherwise).” MediaTek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-05341-YGR, 2014 WL 690161, at *1 (N.D. Cal. Feb. 21, 2014). In determining whether to strike some or all of an expert report for failure to comply with the patent local rules, courts in this district have asked, “[W]ill striking the report result in not just a trial, but an overall litigation, that is more fair, or less?” Apple Inc. v. Samsung Electronics Co., No. 11-cv-01846-PSG, 2012 WL 2499929, at *1 (N.D. Cal. June 27, 2012); Verinata Health, 2014 WL 4100638, at *3.

         B. Federal Rule of Evidence 702

         Rule 702 allows a qualified expert to testify “in the form of an opinion or otherwise” where:

(a) the expert's scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;

(b) the testimony is based on sufficient facts or data;

(c) the testimony is the product of reliable principles and methods; and

(d) the expert has reliably applied the principles and methods to the facts of the case.

Fed. R. Evid. 702. Expert testimony is admissible under Rule 702 “if it is both relevant and reliable.” Cooper v. Brown, 510 F.3d 870, 942 (9th Cir. 2007). “[R]elevance means that the evidence will assist the trier of fact to understand or determine a fact in issue.” Id. Under the reliability requirement, expert testimony must “relate to scientific, technical, or other specialized knowledge, which does not include unsubstantiated speculation and subjective beliefs.” Id. “Importantly, there must be a recognized body of knowledge, learning, or expertise upon which the witness relies. Where there is no field of expertise, nobody will qualify as an expert witness on the subject.” Perez v. Seafood Peddler of San Rafael, Inc., No. 12-cv-00116-WHO, 2014 WL 2810144, at *2 (N.D. Cal. June 20, 2014) (internal quotation marks omitted). The burden is on the proponent of the expert testimony to show, by a preponderance of the evidence, that the admissibility requirements are satisfied. Fed.R.Evid. 702 advisory committee note.

         DISCUSSION

         I. SUMMARY JUDGMENT ON INFRINGEMENT

         Both parties move for partial summary judgment on the question of infringement. Simpson asserts that the undisputed facts show that the Accused Products neither directly nor indirectly infringe on either patent. OZCO counters that the undisputed facts show the Accused Products do infringe claims 1, 2, 4, and 5 of the '998 Patent. Although OZCO asserts infringement of claims 3 and 7, it does not move for summary judgment on those claims.

         A. Direct Infringement of the '998 Patent

         “Once the claims have been correctly construed to determine their scope, the claims must be compared to the accused device.” Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001). “[L]iteral infringement requires that each and every limitation set forth in a claim appear in an accused product.” Frank's Casing Crew & Rental Tools, Inc. v. Weatherford Int'l, Inc., 389 F.3d 1370, 1378 (Fed. Cir. 2004). “Any deviation from the claim precludes . . . a finding [of literal infringement]. Telemac, 247 F.3d at 1330.

         The asserted claims of the '998 Patent read:

1. An apparatus, comprising:

a washer/nut member ...