Willis Electric Co., Ltd. v. Polygroup Limited
- Joan Ericksen
- 0:15-cv-03443
- U.S. District Court · District of Minnesota
- 11
In Willis Electric v. Polygroup, Judge Menendez granted in part and denied in part Polygroup’s request to add prior-art material.
Polygroup was allowed to add only the OPT reference to its prior-art statement; its other proposed additions and requested changes were denied. Willis did not have to respond to those denied additions.
What happened
Willis Electric Co., Ltd. sued Polygroup entities, alleging that their “Quick Set” products infringed several Willis patents. After related patent-review proceedings, Polygroup asked to amend its prior-art statement by adding eleven references, new combinations, and corrections.
Willis opposed the motion but did not challenge two proposed references involving sales of OPT and QS1 trees. Polygroup argued that it discovered the additional material during the patent-review proceedings and later investigation.
Judge Katherine Menendez granted in part and denied in part the motion. The court allowed Polygroup to add the uncontested OPT reference, but denied all other requests, finding problems including lack of diligence, redundancy with previously disclosed references, inadequate justification for new combinations, and prejudice to Willis.
The detailed version
- Willis Electric Co., Ltd. v. Polygroup Limited · No. 0:15-cv-03443
- Joan Ericksen
- Oct. 28, 2019
Background
Willis sued Polygroup Macau Limited (BVI), Polytree (H.K.) Co. Ltd., and Polygroup Trading Limited, alleging that Polygroup’s “Quick Set” products infringed six Willis patents. The district court stayed the litigation while the Patent Trial and Appeal Board reviewed some of the patents. The Federal Circuit largely upheld the Board’s decision not to invalidate Willis’s patents. After the stay was lifted for pleading amendments and discovery, Polygroup moved to amend its prior-art statement.
A prior-art statement identifies the earlier patents, publications, products, or other material that a party contends may affect a patent’s validity. Polygroup sought to add eleven references: Kohen, Levine, Mouser, Electric Connector Handbook, Geisthoff, Joining of Plastics, Boto, Kao598, Willis One Plug Tree Sales, Polygroup Quick Set 1.0 tree sales, and Loomis443. Polygroup also sought to add new combinations of references based on claim-construction positions taken by Willis during the patent-review proceedings and to correct typographical errors and add overlooked claims.
Legal standard
The court explained that amendments to prior-art statements are handled conservatively because early disclosure is intended to make the parties identify their theories, focus discovery, and avoid delay. The party seeking an amendment had to show that the references were not, and could not reasonably have been, located earlier; that they were not redundant of already disclosed prior art; that the benefits of amendment outweighed the opposing party’s prejudice; and that good cause existed. Good cause generally considers diligence, the importance and relevance of the new material, possible gamesmanship, the difficulty of finding it, and prejudice.
Court’s analysis
The court found that Polygroup did not show the required diligence for Kohen, Geisthoff, Levine, Mouser, Electric Connector Handbook, Joining of Plastics, Boto, Kao598, Loomis443, or Quick Set 1.0 tree sales. The court noted that Polygroup already had reason to know about Kohen and Geisthoff, and that Polygroup did not adequately explain why several other references could not have been found through a diligent earlier search. The court also rejected Polygroup’s argument that claim-construction developments during the patent-review proceedings justified the late additions.
The court found that Polygroup had acted diligently regarding the Willis One Plug Tree Sales reference, or OPT. Polygroup had initially understood that no qualifying sales existed before May 8, 2011, but later discovery of Willis’s company documents showed that Willis had offered OPT for sale at least six months before that date. The court concluded that a diligent searcher could not reasonably have been expected to locate those documents earlier.
The court separately found that several proposed references were redundant. Kohen was cumulative of the previously disclosed Jumo reference; Levine was cumulative of McLeish; Joining of Plastics was cumulative of several references concerning interference fits; Boto and Kao598 were cumulative of McCaslin; and Loomis443 was cumulative of McLeish. The court also found that Polygroup had not adequately shown what additional information Mouser and Electric Connector Handbook would provide beyond the references already disclosed.
The court rejected Polygroup’s request to add new combinations because Polygroup acknowledged that it had overlooked them when preparing the original statement. It also denied the request for judicial intervention to correct typographical errors, instructing counsel to address that issue themselves and warning that correcting typos could not be used to make substantive changes. Finally, the court found that Polygroup had not shown that its potential prejudice outweighed the meaningful prejudice Willis would face from further delay and from having to respond to additional prior-art material.
Disposition
Judge Katherine Menendez ordered that Polygroup’s motion to amend its prior-art statement was “DENIED IN MOST PART AND GRANTED IN PART.” The request to add the OPT reference was granted. All other requests in the motion were denied.
Read the full 11-page opinion on CourtListener, the free public archive maintained by the Free Law Project.