Fairhaven Health LLC v. Bio-Origyn LLC

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FAIRHAVEN HEALTH, LLC, Plaintiff, v. BIO-ORIGYN, LLC, JOANNA ELLINGTON, AKA JOANNA CLIFTON, AND DENNIS CLIFTON, Defendant.

No. 2:19-cv-01860-RAJ

United States District Court, W.D. Washington, Seattle

February 16, 2023

ORDER

HONORABLE RICHARD A. JONES, UNITED STATES DISTRICT JUDGE

I. INTRODUCTION

This matter is before the Court on Fairhaven's (“Plaintiff”) Motion for a More Definite Disclosure of Infringement Contentions and Stay, and Motion to Strike (“Motion”) (Dkt. # 102). Having considered the submissions of the parties, the relevant portions of the record, and the applicable law, the Court DENIES the Motion.

II. BACKGROUND

This case concerns Plaintiff's request for a declaratory judgment of noninfringement with regard to its BabyIt products. Plaintiff alleges that it paid salesbased royalties to BioOrigyn, Joanna Ellington, and Dennis Clifton (“Defendants”) on BabyIt products pursuant to a patent license from Defendants. Plaintiff further alleges that it entered into this license based on Defendants' representations that the BabyIt products practiced, and were therefore protected by, one or more claims of U.S. Patent No. 7,838,509 (the “509 patent”). Plaintiff seeks the return of royalty and other payments because the BabyIt products never practiced the claims of the ‘509 patent. Dkt. # 102 at 2.

In January 2022, Defendants filed an Answer, Affirmative Defenses, and Counterclaims to Plaintiff's Amended Complaint, in which Defendants request a declaratory judgment that the BabyIt product infringes on one or more claims of the ‘509 patent. Dkt. # 75 at 33. On April 8, 2022, pursuant to Local Patent Rule (“LPR”) 120, Defendants served their infringement contentions (“Infringement Contentions”) as to the ‘509 patent on Plaintiff. The Contentions accuse all BabyIt products that were made, used, sold, offered for sale, or imported during the life of the ‘509 patent of infringement. One month later, Plaintiff filed the instant motion, alleging several defects in Defendants' contentions. At the parties' request, on June 6, 2022, the Court stayed all deadlines related to claim construction pending the resolution of the instant motion. Dkt. # 113.

III. DISCUSSION

Plaintiff Fairhaven argues that Defendants' Contentions fail to provide reasonable notice to Plaintiff as to why Defendants believe the BabyIt products practice the claims of the ‘509 patent. Dkt. # 102 at 2. Plaintiff allege several specific deficiencies in Defendants' contentions: 1) they contain non-scientific marketing materials, information concerning an unrelated product and an unsold pilot batch, and test data derived from two lots of BabyIt products that were either expired or a new formulation; and (2) while Defendants allege indirect infringement and infringement under the doctrine of equivalents, they provide only bare bones recitations and fail to connect these allegations with the accused products. Id. at 2-3. Plaintiff requests that the Court order Defendants to serve amended contentions, stay discovery related to all BabyIt products until amended contentions are served, and strike portions of Defendants' Contentions that allege indirect infringement and infringement under the doctrine of equivalents, references to marketing materials, and information related to the BabyDance product and several specific lot numbers. Id. at 4.

Defendant, on the other hand, argues that Plaintiff's motion is procedurally improper under Federal Rule of Civil Procedure 12, that Plaintiff did not properly engage in a robust meet and confer process prior to filing the motion, and that the Contentions sufficiently identify the accused device and where each element of each asserted claim is found because the contentions accuse all BabyIt that was made, used, sold, offered for sale, or imported during the life of the ‘509 patent of infringement. Dkt. # 107 at 4-8.

a) Legal Standard

The Local Supplemental Patent Rules for the Western District of Washington (“LPR”) require that “within 15 days of the Scheduling Conference or, if there is no Scheduling Conference, entry of the case schedule, a party claiming infringement shall serve on all parties a ‘Disclosure of Asserted Claims and Infringement Contentions.'” LPR 120. The disclosure shall include: (a) a claim of each patent that is allegedly infringed by each party; (b) each accused apparatus, product, device, process, method, act, or other instrumentality for each asserted claim; (c) a chart identifying specifically where each element of each asserted claim is located within each accused instrumentality for each asserted claim; (d) for indirect infringement, a description of the acts of the alleged indirect infringer that induced the direct infringement by a third party; (e) whether each limitation of each asserted claim is alleged to be literally present or present under the doctrine of equivalents in the accused instrumentality; and (f) the priority date to which each asserted claim is allegedly entitled, if applicable. See LPR 120.

The purpose of the Western District of Washington's local patent rules is to “require parties to state early in the litigation and with specificity their contentions with respect to infringement and invalidity.” 0912139 B.C. Ltd. v. Rampion USA Inc., No. C18-1464JLR, 2019 WL 3082290, at *1 (quoting 02 Micro Int'l Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006)). Infringement contentions may only be amended “by order of the Court upon a timely showing of good cause.” LPR 124. Given the similarities between the local patent rules of this District and those of the Northern District of California, cases from that district “offer helpful standards” that may be applied in this matter. Int'l Bus. Mach. Corp. v. Zillow Grp., Inc., No. C20-851 TSZ, 2020 WL 3266220, at *1 (W.D. Wash. June 17, 2020). “District courts have broad discretion to enforce local patent rules.” Rampion, 2019 WL 3082290, at *1.

b.) Identification of the Accused Device

Plaintiff argues that Defendants' failure to identify the accused products by lot number flouts the Local Rules. The Local Rules require that each product “be identified by name or model number, if known.” LPR 120(b). The parties disagree as to whether Defendants know the lot numbers, with Plaintiff claiming that “all lot number information and details” are “already in Defendants' possession,” and Defendants asserting that it was Plaintiffs who manufactured and sold the accused products and have such information. See Dkt. # 107, 7. Additionally, Defendants essentially argue that Plaintiffs have overstated the significance of the lot numbers with regard to the Infringement Contentions, arguing that lot numbers correspond to specific dates and specific production runs, but do not indicate that “the products are meaningfully different or that manufacturing specifications differ from batch to batch.” Dkt. # 107 at 8. The Court finds Defendants' argument that the Local Rules do not require them to identify all accused products by lot numbers persuasive. While the parties disagree on which party has the full and precise details on each production run-and therefore, lot number-of BabyIt, this information should soon be known to both parties though ongoing discovery. See Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., No. C19-00351-RSM, 2019 WL 3779867, at *5 (W.D. Wash. Aug. 12, 2019) (“Allowing [Plaintiff] the opportunity to glean more information through discovery accords with this District's case law, which recognizes that the Local Patent Rules require disclosures before the completion of claim discovery.”) (citing Recognicorp, LLC v. Nintendo Co., No. C12-1873RAJ, 2013 WL 2099518, at *2 (W.D. Wash. May 8, 2013)). Because Defendants have identified “each BabyIt product made, used, sold, and/or offered for sale by or on behalf of Fairhaven,” along with three lot numbers that Defendants claim are currently available to them, Defendants have met the requirements of LPR 120(b), which require them to identify accused products “by name or model number, if known.”

Further, Plaintiff's argument that Defendants have flouted LPR 120(c) because Defendants have treated “BabyIt as a single accused device” and Defendants' claim charts do not match up with their alleged evidence is similarly unavailing. Defendants correctly note that “a separate claim chart for each accused product is not mandatory,” particularly where each accused product allegedly infringes in the same way. Finjan, Inc. v. Proofpoint, Inc., 2015 WL 1517920, at *3 (N.D. Cal. Apr. 2, 2015) (applying local patent rules of Northern District of California). Defendants allege that all BabyIt products, “[r]egardless of lot numbers,” Dkt. # 107 at 8, allegedly infringe the ‘509 patent because of several characteristics that they all contain: “a balanced salt solution,” a “lubricious compound” that is “nonspermicidal” and is “able to lubricate vaginal mucosa,” and contains “arabinogalactan” and “carbomer” in the lubricious compound. Id. Defendants' Contentions meet the standards set forth in the local rules.

d.) Plaintiff's Requests to Strike Various References

Plaintiff argues that Defendants' Contentions fail to provide reasonable notice as to why Defendants believe they have a reasonable chance of proving infringement.

Plaintiff takes issue with Defendants' reliance on “irrelevant marketing materials, an unrelated product (BabyDance), data from a pilot batch of Babylt.. .that was never sold, and testing of an expired product and product in existence only after the patent expired.” Dkt. # 102 at 6. Consequently, Plaintiff requests that all references to the aforementioned materials be stricken from Defendants' Infringement Contentions because they are not “tethered...