Opinion
W-21-CV-00740-ADA
03-29-2023
TEXTRON INNOVATIONS INC.., Plaintiff, v. SJ DJI TECHNOLOGY CO., LTD. ET AL, Defendants.
THE HONORABLE ALAN D ALBRIGHT, UNITED STATES DISTRICT JUDGE.
REPORT AND RECOMMENDATION OF THE UNITED STATES MAGISTRATE JUDGE
DEREK T. GILLILAND, UNITED STATES MAGISTRATE JUDGE.
This Report and Recommendation is submitted to the Court pursuant to 28 U.S.C. § 636(b)(1)(C), Fed.R.Civ.P. 72(b), and Rules 1(f) and 4(b) of Appendix C of the Local Rules of the United States District Court for the Western District of Texas, Local Rules for the Assignment of Duties to United States Magistrate Judges. Before the Court is Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 142) and Plaintiff's Motion to Strike New Evidence Presented in Defendants' Opposition to Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 201). After considering the briefs and the applicable law, the Court RECOMMENDS that both Motions be GRANTED-IN-PART and DENIED-IN-PART.
I. DISCUSSION
A. Motion to Strike
Textron Innovations Inc. (TII) asserts that SZ DJI Technology Co., Ltd. (DJI) identified for the first time in their summary judgment response, three new individuals who provided three new declarations to support the public availability of the Jourdan, Avanzini, and Christiansen references. ECF No. 201 at 1. TII further asserts that this late disclosure should be excluded under Federal Rule of Civil Procedure (“Rule”) 37(c)(1) for failure to disclose relevant information under Rule 26(a)(1)(A) during fact discovery. ECF No. 201 at 1-2.
Rule 26 requires that parties provide both the name “of each individual likely to have discoverable information-along with the subjects of that information-that the disclosing party may use to support its claims or defenses” and “all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses.” Fed.R.Civ.P. 26(a)(1)(A). When a party fails to disclose relevant information or witnesses under Rule 26 during fact discovery, “Rule 37(c)(1) authorizes the exclusion of evidence that was not timely disclosed from use ‘to supply evidence on a motion, at a hearing, or at a trial.'” Ravgen, Inc. v. Lab. Corp. of Am. Hldgs., No. 6:20-cv-00969-ADA, Dkt. 236 at 4 (W.D. Tex. Oct. 4, 2022). “The presumptive sanction is that the party ‘is not allowed to use that information' unless the party can show that the failure ‘was substantially justified or is harmless.'” Id; see also Flores v. AT&T Corp., No. EP-17-cv-00318-DB, 2019 WL 2746774, at *2 (W.D. Tex. Mar. 27, 2019) (“[T]he party facing sanctions under Rule 37(c) has the burden of demonstrating that a violation of Rule 26 was substantially justified or is harmless.”). There are four factors for determining whether a Rule 26 violation is substantially justified or harmless: “(1) [the party's] explanation for its failure to disclose the evidence, (2) the importance of the evidence, (3) the potential prejudice to [the opposing party] in allowing the evidence, and (4) the availability of a continuance.” CQ, Inc. v. TXU Min. Co., L.P., 565 F.3d 268, 280 (5th Cir. 2009); see also Graham v. El Paso Cnty., No. EP-21-CV-00066-FM, 2022 WL 1112822, at *1 (W.D. Tex. Jan. 12, 2022).
The three new declarations offered were the Declaration of Lauren Gluckman, Declaration of Jessica Loayza, and the Declaration of John B. Wright. ECF No. 201 at 1. None of the individuals were disclosed in DJI's initial disclosures, during fact discovery, offered for depositions, or designated as witnesses for trial. Id. Ms. Gluckman is a librarian employed by DJI's counsel and provided evidence that of general library practices which support the public availability of the Jourdan and Avanzini references. ECF No. 200 at 1-2; ECF No. 175 at 3-5. Ms. Loayza is the Director of Publications Operations and Web Publishing at the AIAA, who purported to confirm that Avanzini was published with papers presented at an AIAA conference. ECF No. 175 at 6. Mr. Wright is a librarian at BYU who submitted a declaration regarding the availability of Christiansen reference. ECF No. 175 at 6; ECF No. 226 at 2. The Wright Declaration, unlike the other two, was submitted as an exhibit in IPR2022-453. ECF No. 226 at 2. IPR2022-453 was incorporated by reference in DJI's invalidity contentions and involved the same Christiansen reference at issue in this case. Id.
The Loayaza and Gluckman Declarations should be struck. It is undisputed that both the Ms. Loayza and Ms. Gluckman as well as their declarations were not disclosed during fact discovery or expert discovery in violation of Rule 26. ECF No. 201 at 2-4; ECF 226 at 4. Further, both declarations provided relevant, discoverable evidence regarding public accessibility which is necessary to DJI's invalidity case. Therefore, DJI failed meet its burden of disclosure for both declarations under Rule 26. In balancing the factors for exclusion under Rule 37, DJI does not provide any justification for the late disclosure of evidence, instead arguing that they were simply declarations authenticating business records under Federal Rules of Evidence 803(6) and 902(11). ECF No. 226 at 1-2. The status of the asserted declarations do not excuse DJI's obligation to disclose witnesses and evidence under Rule 26. DJI's citation to United States v. Daniels, 723 F.3d 562, 579 (5th Cir. 2013) is unavailing because it is a criminal case not subject to the disclosure requirements of Rule 26. Further, DJI admits that the declarations are not important because they “confirm the obvious” and are needlessly cumulative of what is shown on the face of the documents. ECF No. 226 at 3. The prejudice to TII is great because TII has no opportunity to depose either declarant to challenge or develop testimony about evidence of public availability. Finally, a continuance would not cure the prejudice inflicted due to the proximity of the upcoming trial on April 17, 2023. Graham, 2022 WL 1112822, at *3.
In contrast, although Mr. Wright was not disclosed according to Rule 26, the late disclosure of his declaration is harmless because TII was well aware of the Declaration's existence. The Wright Declaration has been known to TII for a substantial amount of time due to its disclosure in IPR2022-453. DJI further put TII on notice that the declaration might be used via IPR2022-453's incorporation by reference in DJI's invalidity contentions. In addition, TII suffers no prejudice. Mr. Wright is a declarant in the IPR proceeding, TII had an opportunity to depose Mr. Wright, and TII chose not to. Because of TII's notice of the Wright Declaration and the lack of prejudice, the Wright Declaration should not be struck.
The Court therefore RECOMMENDS that TII's Motion to Strike New Evidence Presented (ECF No. 201) be GRANTED-IN-PART and strike the Gluckman and Loayza Declarations; and DENIED-IN-PART as to the Wright Declaration.
B. Public Accessibility
TII moves for summary judgment and asserts that DJI has no evidence that the Jourdan, Avanzini, Christiansen, and Gold references were publicly available and therefore not printed publication prior art under 35 U.S.C. § 102(a) or (b). ECF No. 142 at 1.
To establish that a reference qualifies as a printed publication under 35 U.S.C. § 102, the party seeking to rely on the reference as prior art must show clear and convincing evidence that “prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art.” In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986); Colucci v. Callaway Golf Co., 750 F.Supp.2d 767, 773 (E.D. Tex. 2010). “A given reference is publicly accessible upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” See SRI Int'l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed.Cir.2008) (internal quotation and citation omitted).
For the Avanzini reference, the public availability evidence that DJI points to is the copyright date on the face of the reference, the Gluckman Declaration, and the Loayza Declaration to provide evidence of public accessibility. ECF No. 175 at 5-6. As discussed above in Section(I)(A), the Gluckman and Loayza Declarations are struck. Without the Gluckman and Loayza Declarations, there is no non-hearsay evidence that supports the public availability of the Avanzini reference.
For the Jourdan reference, the public availability evidence that DJI points to is Dr. Nourbakhsh's report, the stamp on the face of the Jourdan, and the Gluckman Declaration as evidence of public accessibility. ECF No. 175 at 4-5. As discussed above in Section(I)(A), the Gluckman Declaration is struck. Without the Gluckman Declaration, there is no non-hearsay evidence that supports the public availability of the Jourdan reference.
For the Christiansen reference, the public availability evidence that DJI points to is the Wright Declaration offered during IPR2022-00453 to prove the public availability of the same reference. ECF No. 175 at 6. TII counters that the Wright Declaration is hearsay evidence not subject to the unavailable witness exception under Fed.R.Evid. 804(b)(1). This is incorrect, Mr. Wright is unavailable for this proceeding, and his declaration is former testimony “given as a witness at a trial” (IPR20220-453) and is offered against TII, the patent owner in that proceeding, who had “an opportunity and similar motive to develop it” by cross-examination (although TII chose not to request or pursue a deposition). Fed.R.Evid. 804(b)(1). The Wright Declaration is therefore subject to the unavailable witness exception and is admissible to corroborate that Christiansen “was cataloged and publicly available at HBLL no later than August 18, 2004.” This evidence is sufficient to create a triable issue as to whether the Christiansen reference was sufficiently publicly accessible to constitute a printed publication.
For the Gold reference, the public availability evidence that DJI points to is two papers uncovered during a prior art search by TII inventor Christensen which cite Gold, NASA's NTRS webpage, and the Galus Declaration discussing public availability from agency counsel at NASA offered during IPR. ECF No. 175 at 1-3. The two papers uncovered during Plaintiff's 2008 prior art search with publication dates of 2002 cite to Gold in their list of references. ECF No. 175 at 13. Because actual distribution occurred to persons interested and ordinarily skilled in the subject matter and art, public availability is shown. See Boileau v. Diamond, 659 F.2d 247, 248-49 (D.C.Cir.1981); Medtronic, Inc. v. AGA Med. Corp., 618 F.Supp.2d 1191, 1193 (N.D. Cal. Apr. 28, 2009). Taken together with the Galus Declaration, the evidence is sufficient to create a triable issue as to whether the Gold reference was sufficiently publicly accessible to constitute a printed publication.
The Court therefore RECOMMENDS that Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 142) is GRANTEDIN-PART with regards to the Jourdan and Avanzini references; and DENIED-IN-PART as to the Christiansen and Gold references.
II. RECOMMENDATION
For the above reasons, it is the RECOMMENDATION of the United States Magistrate Judge to the United States District Judge that Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 142) and Plaintiff's Motion to Strike New Evidence Presented in Defendants' Opposition to Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 201) be GRANTED-IN-PART and DENIED-IN-PART.
The Court further RECOMMENDS that TII's Motion to Strike New Evidence Presented (ECF No. 201) be GRANTED-IN-PART and strike the Gluckman and Loayza Declarations; and DENIED-IN-PART as to the Wright Declaration.
The Court further RECOMMENDS that Plaintiff's Motion for Summary Judgment of No Public Accessibility of Certain Alleged Prior Art References (ECF No. 142) is GRANTED-IN-PART with regards to the Jourdan and Avanzini references; and DENIED-IN-PART as to the Christiansen and Gold references.
III. OBJECTIONS
The parties may wish to file objections to this Report and Recommendation. Parties filing objections must specifically identify those findings or recommendations to which they object. The District Court need not consider frivolous, conclusive, or general objections. See Battle v. U.S. Parole Comm'n, 834 F.2d 419, 421 (5th Cir. 1987).
A party's failure to file written objections to the proposed findings and recommendations contained in this Report within 14 days after the party is served with a copy of the Report shall bar that party from de novo review by the District Court of the proposed findings and recommendations in the Report. See 28 U.S.C. § 636(b)(1)(C); Thomas v Arn, 474 U.S. 140, 15053 (1985); Douglass v. United Servs. Auto. Ass'n, 79 F.3d 1415 (5th Cir. 1996) (en banc). Except upon grounds of plain error, failing to object shall further bar the party from appellate review of unobjected-to proposed factual findings and legal conclusions accepted by the District Court. See 28 U.S.C. § 636(b)(1)(C); Thomas, 474 U.S. at 150-53; Douglass, 79 F.3d at 1415.