United States District Court, N.D. California
ORDER ON CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT
AND MOTION TO STRIKE Re: Dkt. Nos. 102, 104, 105, 106, 123,
William H. Orrick United States District Judge.
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.
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.”) 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.
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].
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.
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).
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).
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
MOTION TO STRIKE
Patent Local Rules
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).
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).
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).
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.
Federal Rule of Evidence 702
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
(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
SUMMARY JUDGMENT ON INFRINGEMENT
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.
Direct Infringement of the '998 Patent
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.
asserted claims of the '998 Patent read:
1. An apparatus, comprising:
a washer/nut member ...