Dynatemp Int'l, Inc. v. R421a, LLC

560 F.Supp.3d 969

DYNATEMP INTERNATIONAL, INC.; Fluorofusion Specialty Chemicals, Inc.; Harold B. Kivlan, IV; William Gresham ; and David Couchot, Plaintiffs,

v.R421A, LLC; RMS of Georgia, LLC, d/b/a Choice Refrigerants; Kenneth M. Ponder; and Lenz Sales & Distributing, Inc., Defendants.

No. 5:20-CV-142-FL

United States District Court, E.D. North Carolina, Western Division.

Signed September 17, 2021

Emily M. Haas, Michael Best & Friedrich LLP, Robert J. Morris, Smith, Anderson, Blount, Dorsett, Mitchell & Jernigan, LLP, Raleigh, NC, Jon R. Trembath, Michael Best & Friedrich LLP, Denver, CO, Russell M. Racine, Cranfill Sumner & Hartzog LLP, Charlotte, NC, for Plaintiffs/Counter Claimants/Counter Defendants Dynatemp International, Inc., Fluorofusion Specialty Chemicals, Inc.

Robert J. Morris, Smith, Anderson, Blount, Dorsett, Mitchell & Jernigan, LLP, Emily M. Haas, Michael Best & Friedrich LLP, Raleigh, NC, Jon R. Trembath, Michael Best & Friedrich LLP, Denver, CO, for Plaintiffs Harold B. Kivlan, IV, William Gresham, David Couchot.

Andrea N. Bonner, Todd Deveau, Joseph W. Staley, Scott P. Amy, Thomas Horstemeyer, LLP, Atlanta, GA, Charles George, T. Cullen Stafford, Wyrick Robbins Yates & Ponton, LLP, Raleigh, NC, for Defendant R421A, LLC.

Andrea N. Bonner, Todd Deveau, Joseph W. Staley, Thomas Horstemeyer, LLP, Atlanta, GA, Charles George, T. Cullen Stafford, Wyrick Robbins Yates & Ponton, LLP, Raleigh, NC, for Counter Defendant R421A, LLC.

Charles George, T. Cullen Stafford, Wyrick Robbins Yates & Ponton, LLP, David S. Wisz, Bailey & Dixon, L.L.P., Raleigh, NC, Andrea N. Bonner, Joseph W. Staley, Todd Deveau, Thomas Horstemeyer, LLP, Atlanta, GA, for Counter Claimant/Counter Defendant RMS of Georgia, LLC.

Charles George, T. Cullen Stafford, Wyrick Robbins Yates & Ponton, LLP, David S. Wisz, Bailey & Dixon, L.L.P., Raleigh, NC, Andrea N. Bonner, Joseph W. Staley, Todd Deveau, Scott P. Amy, Thomas Horstemeyer, LLP, Atlanta, GA, for Defendants RMS of Georgia, LLC, Kenneth M. Ponder.

Andrew A. Vanore, III, Brown, Crump, Vanore and Tierney, LLP, Raleigh, NC, for Defendant Lenz Sales & Distributing, Inc.

ORDER

LOUISE W. FLANAGAN, United States District Judge This matter is before the court for a claim construction order. The parties filed a revised joint claim construction statement, claim construction briefs, and responses thereto. In addition, motion to strike (DE 166) was filed by RMS of Georgia, LLC ("RMS") and R421A, LLC (collectively, the "RMS parties"). The court held hearing on motion to strike and claim construction on August 31, 2021, and took the matters under advisement. In this posture, the issues raised are ripe for ruling. The court sets forth below its decision on the parties’ disputed claim term and denies the RMS parties’ motion to strike.

BACKGROUND

The court recounts procedure pertinent to the issues now under consideration in this consolidated case. On April 22, 2021, the RMS parties filed the operative second amended complaint, asserting claims of patent infringement, induced infringement, and contributory infringement against Dynatemp International, Inc. ("Dynatemp"); Fluorofusion Specialty Chemicals, Inc. ("Fluorofusion"); Harold B. Kivlan, IV, the chief executive officer and chief financial officer of Dynatemp and officer of Fluorofusion; William Gresham, vice president of Dynatemp; and David Couchot, president of Fluorofusion (collectively, the "Dynatemp parties"). The RMS parties claim that the Dynatemp parties market a refrigerant product that infringes upon three patents owned by R421A, LLC, U.S. Patent No. 9,982,179 ; U.S. Patent No. 8,197,706 ; U.S. Patent No. 10,703,949 (the " ’179 Patent", the " ’706 patent", the " ’949 Patent", collectively, "the patents").

The patents, each entitled "Refrigerant with Lubricating Oil for Replacement of R22 Refrigerant," are directed to an apparatus and method for substituting ozone layer-damaging chlorodifluoromethane with less environmentally damaging refrigerants, pentafluroethane and tetrafluoroethane, in chlorodifluoromethane-based-air-cooling systems. The patents share virtually identical specifications, and the claims of the patents include many overlapping claim terms.

As required by the court's October 23, 2020, case management order and Local Patent Rule 304.3, the parties filed a joint claim construction statement on April 9, 2021, setting forth nine disputed claim terms and proposed constructions for those terms. After an initial round of briefing on claim construction, the parties filed a revised joint claim construction statement on July 14, 2021, narrowing the disputed claim terms from nine to two. That same day, the parties filed responsive claim construction briefs.

Two weeks later, the RMS parties moved to strike exhibits attached to the Dynatemp parties’ responsive claim construction brief. In support, the RMS parties rely upon a memorandum of law, the Dynatemp parties’ disclosure of preliminary constructions, correspondence between the parties, and highlighted versions of the Dynatemp parties’ responsive claim construction brief and appendix thereto. The Dynatemp parties responded in opposition on August 19, 2021, relying upon email correspondence and declarations of counsel. The RMS parties replied shortly thereafter, relying upon the Dynatemp parties’ disclosure of proposed terms, as well as a declaration of counsel.

On August 31, 2021, the court held hearing on motion to strike and claim construction, which included presentations in the nature of a tutorial and argument regarding disputed claim terms and motion to strike. As noted in the analysis herein, the parties reached agreement at hearing on one disputed claim term, leaving one term for construction herein.

COURT'S DISCUSSION

A. Motion to Strike

The RMS parties move to strike the following exhibits attached to the Dynatemp parties’ responsive claim construction brief: 1) definitions of "standard state" and "normal temperature and pressure" in the Oxford Dictionary of Mechanical Engineering ("exhibit 12") and 2) AHRI Standard 700 ("exhibit 20").¹ According to the RMS parties, this evidence was not disclosed in the parties’ joint claim construction statement, in contravention of Local Patent Rule 304.3.

As relevant here, Local Patent Rule 304.3 provides that the parties’ joint claim construction statement shall contain:

an identification of any extrinsic evidence known to the party on which it intends to rely either to support its proposed construction of the claim or to oppose any other party's proposed construction of the claim, including, but not limited to, as permitted by law, dictionary definitions, citations to learned treatises and prior art, and testimony of percipient and expert witnesses.

Local Patent Rule 304.3(b) (emphasis added).

When faced with the interpretation of a procedural rule, like the interpretation of any statute, the court's analysis must begin with the plain language of the rule. See, e.g., Dodd v. United States, 545 U.S. 353, 359, 125 S.Ct. 2478, 162 L.Ed.2d 343 (2005) ("[W]hen the statute's language is plain, the sole function of the courts—at least where the disposition required by the text is not absurd—is to enforce it according to its terms."). The plain language of Local Patent Rule 304.3(b) states only that a party must identify extrinsic evidence "known to the party on which it intends to rely either to support its proposed construction of the claim or to oppose any other party's proposed construction of the claim." Local Patent Rule 304.3(b) (emphasis added). By implication then, the rule does not require the joint claim construction statement to include extrinsic evidence if that evidence is not known to the party or if the party does not intend to rely upon it. See generally Reyes-Gaona v. N. Carolina Growers Ass'n, 250 F.3d 861, 865 (4th Cir. 2001) ("[T]he doctrine of expressio unis est exclusio alterius instructs that where a law expressly describes a particular situation to which it shall apply, what was omitted or excluded was intended to be omitted or excluded."). Accordingly, Local Patent Rule 304.3(b) imposes a subjective standard, that turns on a party's knowledge and intent at the time the joint claim construction is filed.

Here, exhibits 12 and 20 constitute extrinsic evidence. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (explaining that "extrinsic evidence" includes expert testimony, technical information, and dictionaries). As a result, Local Patent Rule 304.3(b) requires early disclosure of this evidence only if the Dynatemp parties knew of it and intended to rely upon it when they filed the joint claim construction statement. See Local Patent Rule 304.3(b). As detailed in his sworn declaration, counsel for the Dynatemp parties did not consult exhibit 12 in connection with this case until June or July 2021, after the RMS parties argued in their opening claim construction brief that reference to standard conditions was arbitrary. (Trembath Decl. (DE 175) ¶ 5). Likewise, counsel became aware that exhibit 20 distinguishes between liquid refrigerants and refrigerant gases for the first time on June 25, 2021, when he was attempting to formulate a response to the RMS parties’ opening claim construction brief. (Id. ¶¶ 7-8). Since the Dynatemp parties intended to rely on these exhibits only after reading the RMS parties’ opening claim construction brief, Local Patent Rule 304.3(b) does not preclude their admissibility.

The RMS parties urge the court to interpret Local Patent Rule 304.3(b) as imposing an objective standard. Otherwise, they argue, a party will become the arbiter of its own disclosure obligations, and parties will refuse to look for evidence until later in the claim construction process to avoid disclosing it. While this argument supports an objective standard, there are countervailing policy considerations at play. As evidenced by the record in this case, claim construction is a fluid process. Following...