Minnesota Patent Litigation Wrap-Up: February 2017

Co-Authored by: Conrad Gosen

This post continues our monthly summary of patent litigation in the District of Minnesota, including a review of new cases filed this month and a short summary of substantive orders issued in pending cases.

In February, 2017, there were three new patent actions filed in the District of Minnesota, and three notable substantive decisions or orders for pending cases.

New Cases

• Metrospec Tech. LLC v. Hubbell Lighting, Inc. (filed 2/3/17)
  • Light emitting diodes
  • S. Patent Nos. 8,143,631 ("Layered Structure for Use With High Power Light Emitting Diode Systems"), 8,525,193 ("Layered Structure for Use With High Power Light Emitting Diode Systems"), and 9,341,355 ("Layered Structure for Use With High Power Light Emitting Diode Systems")
• Oticon A/S et al. v. GN Hearing A/S (filed 2/17/17)
  • Declaratory judgment action
  • Hearing aids
  • S. Patent No. 9,446,233 ("Behind-The-Ear (BTE) Prosthetic Device With Antenna")
• Steven Aylsworth v. Apex Machine Sales, Inc. et al.
  • Lumber processing
  • S. Patent No. 8,960,244 ("Automated Lumber Retrieval and Delivery")

Notable Decisions

• Bombardier Recreational Prods. Inc. et al. v. Arctic Cat Inc. et al., No. 12-cv-2706 (JRT/LIB): Order on motions to exclude
  • On February 24, 2017, Judge Tunheim denied Arctic Cat's Motions to Exclude certain damages and other expert testimony and granted-in-part Bombardier's motion to exclude expert testimony.
  • Arctic Cat filed motions to exclude Bombardier's technical expert opinions on the grounds that the experts relied on undisclosed and or unreliable data and an improper claim construction analysis.
    • As to Bombardier's first infringement expert, Mr. Larson, Arctic Cat contended that Bombardier's use of website images to determine steering pitch angles for snowmobiles was unreliable and did not represent the actual pitch angles in the accused products. Judge Tunheim denied Arctic Cat's motion to exclude, noting that while the technique was novel, the expert "explained the reason and basis for developing his process, and he tested the technique by comparing the web-based measurements to his physical measurements."
    • As to the Bombardier's second technical expert, Mr. Breen, Arctic Cat contended that Mr. Breen purported to rely on a technical analysis for a range of accused snowmobiles from Mr. Larson's report that was not actually present in Mr. Larson's report. Bombardier contended this was simply an error that was corrected in Mr. Larson's rebuttal report. Based on this correction, Judge Tunheim denied Arctic Cat's motion to exclude.
    • Arctic Cat also challenged Mr. Breen's opinions regarding Arctic Cat's alleged copying (offered in support of Bombardier's willful infringement claim), contending that willfulness is an issue for the jury, not expert testimony. Judge Tunheim acknowledged that courts have excluded expert testimony on the "sufficiency of the evidence of willful infringement." However, Judge Tunheim allowed Mr. Breen's testimony as it "is not about the sufficiency of evidence," bur rather would "help the jury understand the technical evidence and provide relevant context . . . to determine if copying occurred."
    • As to Bombardier's third technical expert, Dr. Raasch, Arctic Cat argued that Dr. Raasch improperly offered opinions regarding claim construction in contravention of the Court's claim construction order. Judge Tunheim disagreed, finding that Dr. Raasch did not contradicted the Court's claim construction, nor did Dr. Raasch reassert a rejected definition, but instead that Dr. Raasch merely explained how she would apply the Court's construction in testing procedures.
  • Arctic Cat also challenged Bombardier's damages expert's opinions on the grounds that the expert's lost profits opinions did not comply with the Panduit requirements for lost profits damages. Specifically, Arctic Cat contended that one of Bombardier's experts, Dr. Ugone, failed to account for the presence of non-infringing alternatives in the market. Judge Tunheim disagreed, finding that Bombardier could still seek recovery under a market-share analysis. Arctic Cat also unsuccessfully challenged various other aspects of Dr. Ugone's damages analysis and evidence (including Dr. Ugone's reasonable royalty and convoyed sales opinions).
  • Bombardier filed a motion to exclude Arctic Cat's technical expert's opinions on the grounds that the expert, David Karpik, improperly offered opinions on claim construction that conflicted with the Court's earlier claim construction order. The Court agreed, finding that several of Mr. Karpik's conclusions were founded on Arctic Cat's constructions that the Court had already rejected (or functionally equivalent constructions). However, Judge Tunheim denied Bombardier's motion to exclude other parts of Mr. Karpik's testimony that did not relying on rejected constructions, finding that his opinions regarding obviousness, "design choice," commercial success, and copying were sufficiently reliable to be submitted to the jury. Bombardier also challenged the opinions of Arctic Cat's validity expert, Mr. Warner on similar grounds, but Judge Tunheim denied the motion.
• Bombardier Recreational Prods. Inc. et al. v. Arctic Cat Inc. et al., No. 12-cv-2706 (JRT/LIB) — Order sustaining-in-part objections to Magistrate's order on motion to transfer and motions to strike
  • On February 27, 2017, Judge Tunheim sustained-in-part Bombardier's objections to the Magistrate's denial of Bombardier's motion to strike expert testimony and denied the parties' remaining objections to other motions.
  • In the underlying order, Magistrate Judge Brisbois granted-in-part and denied-in-part Arctic Cat's motion to compel, Arctic Cat's motion to strike portions of Bombardier's expert reports, and Bombardier's motion to strike portions of Arctic Cat's expert reports. The Magistrate Judge also denied Bombardier's motion to transfer venue and motion to compel additional discovery. Both parties raised objections to Judge Tunheim.
  • Regarding the motion to transfer venue, Bombardier sought to transfer the case from Fergus Falls to Minneapolis for the convenience of the parties. Judge Tunheim agreed with the Magistrate's rationale for denying transfer, finding that each proposed location would be inconvenient for at least one party and some of its witnesses.
  • Regarding Bombardier's motion to strike, Bombardier argued it was improper for Arctic Cat's expert, Mr. Karpik to offer an opinion that was contradictory to Arctic Cat's prior admission in its non-infringement contentions. Arctic Cat argued the changed position was a result of the Court's claim construction order. While the Magistrate agreed with Arctic Cat's reasoning, Judge Tunheim did not, finding that Arctic Cat was aware of the alternative constructions, and noting that "[g]ood cause does not automatically exist to amend non-infringement charts whenever a judge's decision does not adopt a party's hoped for claim-construction positions." As such, Judge Tunheim sustained Bombardier's objections to the Magistrate's denial of its motion to strike. However, Judge Tunheim agreed with the Magistrate's denial of Bombardier's motion to strike other portions of Mr. Karpik's opinions as allegedly based on undisclosed prior art and combinations. Specifically, Judge Tunheim agreed that prior art used for "background" purposes need not be specifically disclosed, and that the Court's scheduling order did not require all combinations of prior art to be disclosed.
  • Judge Tunheim overruled Arctic Cat's various objections to the Magistrate's denial of Arctic Cat's motions, including Arctic Cat's arguments that Bombardier's expert applied a claim construction inconsistent with the Court's prior order.
• Luminara Worldwide, LLC et al. v. Liown Electronics Co., Ltd, Shenzhen et al., No. 12-cv-3103 (SRN/FLN): Grant of summary judgment of non-infringement
  • On February 6, 2017, Judge Nelson granted Defendant Abbott of England's Motion for Summary Judgment of non-infringement on Plaintiff's induced infringement claims.
  • Defendant Abbott of England is a Canadian based company that sells flameless candles. Abbott contended that it only sells the accused candles to retailers in Canada and the United Kingdom, and thus is not subject to the patent laws of the United States.
  • Plaintiff Luminara argued that Abbott was liable for induced infringement in the United States on three grounds: 1) Abbott's website directs consumers to locate United States retailers that sell Luminara products, 2) Abbott posted on Facebook in response to an inquiry about the availability of accused products in the United States, and 3) Plaintiff's employees were able to purchase the accused products from one of Abbott's third-party Canadian retailers.
  • The Court granted summary judgement of no induced infringement, finding that Plaintiff Luminara failed to produce evidence of Abbott's specific intent to induce infringement, or of any relevant third-party direct infringement. In so holding, the Court found that Luminara's own purchase of the accused candle took place prior to Abbott having any awareness of the patent-in-suit, and as such Abbott could not have had the requisite intent to induce direct infringement at that time. As to Abbott's website, the Court noted that Luminara failed to provide any evidence that the United States retailers identified on Abbott's website actually sold the accused products (and Abbott provided evidence to the contrary). Finally, the Court found that Abbott's statement on Facebook that it was "working on" bringing the accused products to the United States and that the consumer should instead look for Canadian retailers who may ship to the United States could not show the "sort of specific intent to cause direct infringement required for inducement."