United States District Court, D. Nevada
ROBERT C. JONES, District Judge.
This case arises out of Plaintiff JS Products, Inc.'s alleged infringement of a patent owned by Defendant/Counterclaimant Kabo Tool Company. Pending before the Court are Kabo's three discovery-related motions: (1) a motion to reconsider Magistrate Judge Foley's order granting a motion to quash (ECF No. 177); (2) a motion to strike Plaintiff's supplemental invalidity contentions (ECF No. 210); and (3) a motion to strike portions of expert testimony related to Plaintiff's supplemental invalidity contentions (ECF No. 233). For the reasons stated herein, the motion to reconsider is denied and the motions to strike are granted in part and denied in part. Specifically, the motions to strike are granted only to the extent that JSP intends to rely on the supplemental prior art in support of its anticipation contention and denied with respect to JSP's obviousness contention.
I. FACTS AND PROCEDURAL HISTORY
Plaintiff JS Products, Inc. ("JSP") is a Nevada corporation in the business of importing and selling tools. (Compl., ECF No. 1, at 1-2). Defendant Kabo is a Taiwanese company that owns U.S. Patent No. 7, 066, 057 (the "'057 Patent"), which relates to a wrench with jaws that have different tilt angles. ( Id. at 1-2; '057 Patent, ECF No. 1, at 8).
On August 29, 2011, counsel for Kabo sent JSP a letter stating that Kabo owned the '057 Patent and that Kabo believed certain wrenches imported into the United States and sold by JSP (the "Accused Products") infringed on the '057 Patent. (Compl., ECF No. 1, at 2). Kabo further demanded that JSP cease and desist its allegedly infringing activity. ( Id. at 2-3). In a responsive letter, JSP acknowledged Kabo's demand but disagreed with its allegations and detailed several alleged defects in Kabo's infringement theory. ( Id. at 3).
On November 17, 2011, JSP initiated the instant action against Kabo, claiming: (1) that JSP is entitled to a declaratory judgment of non-infringement and invalidity and/or unenforceability of the '057 Patent (claim 1); (2) intentional interference with contractual relations and/or prospective economic advantage (claim 2); and (3) commercial disparagement and/or corporate defamation (claim 3). ( Id. at 3-5). Kabo has counterclaimed for infringement. (First Am. Countercl., ECF No. 153).
On December 7, 2011, Kabo filed a motion to dismiss claims two and three, which the Court granted, with leave to amend. (Order, ECF No. 33). JSP subsequently filed its First Amended Complaint ("FAC"), in which it has realleged the commercial disparagement and/or corporate defamation claim (now claim 2) and omitted the claim for intentional interference with contractual relations and/or prospective economic advantage. (FAC, ECF No. 34, at 6).
The Parties have engaged in lengthy and often contentious discovery, and the pending motions arise out of discovery-related disputes. Specifically, Kabo has moved for (1) reconsideration of Magistrate Judge Foley's order granting a motion to quash; (2) an order striking JSP's supplemental invalidity contentions; and (3) an order striking portions of expert testimony related to the supplemental invalidity contentions. The Court now considers the pending motions.
II. MOTION TO RECONSIDER MAGISTRATE JUDGE'S ORDER (ECF No. 177)
Magistrate judges are authorized to resolve pretrial matters subject to district court review under a "clearly erroneous or contrary to law" standard. 28 U.S.C. § 636(b)(1)(A); see also Fed.R.Civ.P. 72(a); LR IB 3-1(a) ("A district judge may reconsider any pretrial matter referred to a magistrate judge in a civil or criminal case pursuant to LR IB 1-3, where it has been shown that the magistrate judge's ruling is clearly erroneous or contrary to law."). "A finding is clearly erroneous when although there is evidence to support it, the reviewing body on the entire evidence is left with the definite and firm conviction that a mistake has been committed. " United States v. Ressam, 593 F.3d 1095, 1118 (9th Cir. 2010) (emphasis added) (internal quotation marks omitted). A magistrate's pretrial order issued under 28 U.S.C. § 636(b)(1)(A) is not subject to de novo review, and the reviewing court "may not simply substitute its judgment for that of the deciding court." Grimes v. City & County of San Francisco, 951 F.2d 236, 241 (9th Cir. 1991).
Kabo seeks relief from Magistrate Judge Foley's order granting JSP's motion to quash a subpoena served on Sears Holding Company ("SHC") (the "Sears Order"), a non-party to the instant litigation. ( See Order, ECF No. 171). Kabo does not challenge Magistrate Judge Foley's application of the law, but rather insists that the Sears Order was based upon clearly erroneous factual conclusions. (Mot. Recons., ECF No. 177, at 5). Specifically, Kabo claims that the subpoena it served on SHC on February 28, 2013, nearly two months after the December 31, 2012 cut-off date for "new" fact discovery, (Scheduling Order, ECF No. 130, at 2), was not "new" but rather "follow-up" discovery that should have been permitted, (Mot. Recons., ECF No. 177, at 6).
Although the Parties expressly agreed to a limited discovery extension that allowed both sides to complete discovery that was "currently pending" or "timely noticed" prior to the December 31 cut-off date, (Scheduling Order, ECF No. 95),  Kabo made no attempt to subpoena SHC until well after that date. Nonetheless, Kabo now argues that Magistrate Judge Foley was clearly erroneous in finding that the SHC subpoena was "new" and thus, outside the scope of the limited extension. (Mot. Recons., ECF No. 177, at 5). The Court disagrees. Because Magistrate Judge Foley's order is based on the clear limiting language of the discovery stipulation and Kabo's undisputed tardiness, it presents nothing that leaves this Court with a "definite and firm conviction that a mistake has been committed." Ressam, 593 F.3d at 1118. Accordingly, it cannot be considered clearly erroneous and will not now be disturbed. Kabo's feigned ignorance, ( Compare Opp'n to Mot. Quash, ECF No. 147, at 7, n.4 (asserting that because Kabo lacked knowledge of a particular item number or name, it could not serve SHC with a reasonably particular subpoena prior to the cut-off for new discovery), with Opp'n to Mot. Recons., ECF No. 188, at 4-6 (demonstrating that Kabo had ample information to issue a reasonably particular subpoena)), claims of prejudice, (Mot. Recons., ECF No. 177, at 5-6), and unsupported allegations that JSP fraudulently induced the stipulated discovery limitation, ( Id. at 7),  are unpersuasive. The motion to reconsider is therefore denied.
III. MOTIONS TO STRIKE (ECF Nos. 210 and 233)
Local Rules 16.1-1 to 16.1-21 contain special discovery rules applicable to patent cases under this District's Patent Pilot Program. Local Rule 16.1-6 mandates disclosure of a patent plaintiff's "Asserted Claims and Infringement Contentions" within fourteen days after the Rule 26(f) scheduling conference, and Local Rule 16.1-8 mandates disclosure of a patent defendant's "Non-infringement, Invalidity, and Unenforceability Contentions" within forty-five days thereafter. Local ...