Columbia Insurance Co. v. Simpson Strong-Tie Company Inc

Background

MiTek manufactures and sells construction hangers, and Simpson makes and sells fire-wall hangers. Columbia owns U.S. Patent No. 10,316,510, and MiTek is its exclusive licensee. The patent concerns a hanger designed to connect trusses or joists to wall framing while minimizing interruptions in fire-resistant drywall or sheathing.

The plaintiffs alleged that Simpson’s DGF/DGHF/DGBF Fire Wall Hangers infringed claim 40 of the patent. Simpson later petitioned for post-grant review, a proceeding before the Patent Trial and Appeal Board that challenged the patent’s validity. The Board found claims 1 through 20 invalid but found substitute claim 40 patentable. The Federal Circuit affirmed, and the United States Patent and Trademark Office later issued a certificate incorporating claim 40 into the patent.

Simpson asserted that claim 40 was invalid based on five prior-art references, including Cullen, Chapin, and Yamaguchi. The plaintiffs moved for partial summary judgment based on post-grant-review estoppel under 35 U.S.C. § 325(e)(2). That statute prevents a post-grant-review petitioner from asserting an invalidity ground in a patent-infringement case if the petitioner raised it, or reasonably could have raised it, during the review.

Motions in Limine

A motion in limine asks the court to make a preliminary ruling about whether evidence may be presented at trial. Simpson moved to exclude the opinions and testimony of plaintiffs’ expert Eugene Lhymn under Federal Rule of Evidence 702 and the standards governing reliable expert testimony. Lhymn opined that a reasonably diligent skilled searcher would have found the Cullen, Chapin, and Yamaguchi references before Simpson filed its post-grant-review petition.

The court denied Simpson’s motion. It found Lhymn’s opinions relevant and concluded that Simpson’s arguments about hindsight bias principally affected the credibility and weight of his opinions rather than the reliability of the methods he used. The court later stated, however, that Lhymn’s prior review of the references created hindsight bias and that his testimony should not receive substantial weight.

The plaintiffs moved to exclude opinions from Simpson’s experts Andrew Hirshfeld, Charles Cypher, and Long Nguyen. The court found Hirshfeld qualified to discuss general patent-searching methods and the qualifications of skilled searchers, but not qualified to opine specifically about invalidity searches or what a diligent invalidity search would uncover. The court therefore granted in part and denied in part the plaintiffs’ motion as to Hirshfeld. It excluded several of his opinions about the scope and diligence of Simpson’s searches and the qualifications of particular searchers, but did not exclude his opinions about the reputation of the Cardinal IP and Clarivate search firms or the qualifications of a skilled searcher generally. The court also excluded an unsupported rebuttal opinion about the experience of the Clarivate searcher.

As to Cypher, the court found his opinions about the qualifications and experience of the foreign searchers sufficiently supported and denied that part of the plaintiffs’ motion. It granted the motion to exclude his opinions about the scope and diligence of the Cardinal IP search and the searches conducted by Cypher and the foreign associates because he did not provide enough information about databases, search terms, or search results to support his conclusions. As to Nguyen, the court denied the motion, finding evidence that he supervised the Clarivate search, knew the searcher, and reviewed the search strings and work.

Partial Summary Judgment on Estoppel

The plaintiffs argued that Simpson reasonably could have raised Cullen, Chapin, and Yamaguchi during post-grant review and therefore was estopped from using them as invalidity grounds. The court explained that the plaintiffs had to prove by a preponderance of the evidence that a skilled searcher exercising reasonable diligence would have found each reference.

For Chapin and Yamaguchi, the court found that Lhymn’s testimony was insufficient. Lhymn had extensively reviewed those references before constructing his search strings, and the court found that his conclusions were likely affected by hindsight bias. The court also found a factual dispute about his credibility based on his testimony concerning the number of searches he had performed and managed. The court therefore found that the plaintiffs had not shown that a diligent skilled searcher would have found Chapin or Yamaguchi.

For Cullen, the court reached a different result. Cullen had appeared in the results of a Cardinal IP search conducted at Simpson’s direction during the post-grant-review period. The court found that the searcher reasonably should have reviewed those results. It held that the plaintiffs proved Cullen reasonably could have been raised during post-grant review and granted partial summary judgment for the plaintiffs as to Cullen.

Disposition

The court denied Simpson’s motion in limine. It granted in part and denied in part the plaintiffs’ motion in limine. It granted in part and denied in part the plaintiffs’ motion for partial summary judgment, granting it as to Cullen and denying it as to Chapin and Yamaguchi.