Asia Vital Components Co., Ltd. v. Asetek Danmark A/S

• Citation: 377 F.Supp.3d 990
• Decision Date: 15 March 2019
• Docket Number: Case No. 16-cv-07160-JST
• Parties: ASIA VITAL COMPONENTS CO., LTD., Plaintiff, v. ASETEK DANMARK A/S, Defendant.
• Court: U.S. District Court — Northern District of California

377 F.Supp.3d 990

ASIA VITAL COMPONENTS CO., LTD., Plaintiff,

v.ASETEK DANMARK A/S, Defendant.

Case No. 16-cv-07160-JST

United States District Court, N.D. California.

Signed March 15, 2019

Filed March 26, 2019

William Lee Buus, Schiffer & Buus, Costa Mesa, CA, Hubert H. Kuo, Jeffrey Thomas Gwynn, Ardent Law Group, P.C., Newport Beach, CA, Wei-Lin Chen, Zoomlaw Attorneys-at-Law, for Plaintiff.

Jacob Adam Schroeder, James Shelby Miller, Jeffrey D. Smyth, Robert Francis McCauley, Arpita Bhattacharyya, Finnegan Henderson Farabow Garrett & Dunner, LLP, Palo Alto, CA, Charles Brandon Rash, Finnegan Henderson Farabow Garrett & Dunner LLP, Washington, DC, for Defendant.

ORDER RE: CROSS-MOTIONS FOR PARTIAL SUMMARY JUDGMENT AND MOTION TO STRIKE

Re: ECF Nos. 180, 185, 186

JON S. TIGAR, United States District Judge

Before the Court are cross-motions for partial summary judgment filed by Plaintiff/Counter-Defendant Asia Vital Components Co. ("AVC") and Defendant/Counter-Claimant Asetek Danmark A/S. ECF Nos. 180, 186. Asetek has also filed several requests to strike. ECF No. 185. The Court will grant the motions to strike in part, grant Asetek's motion for partial summary judgment, and deny AVC's motion for partial summary judgment.¹

I. BACKGROUND

The Court briefly sets out the nature and history of this dispute, then reviews the factual record in greater detail where relevant below.² This case concerns two patents, held by Asetek, that describe a liquid cooling device for the central processing unit of a computer: U.S. Patent Nos. 8,240,362 ("the '362 patent") and 8,245,764 ("the '764 patent"). ECF Nos. 180-13, 180-14. Claim 1 of the '362 patent is illustrative:

1. A cooling system for a computer processing unit, comprising:

an integrated element including a heat exchanging interface, a reservoir, and a pump, wherein

the reservoir is configured to receive a cooling liquid from outside the reservoir through an inlet and pass the cooling liquid to the outside through an outlet, the reservoir including an upper chamber and a lower chamber, the upper chamber and the lower chamber being vertically displaced chambers that are separated by at least a horizontal wall and fluidly coupled together by a plurality of substantially circular passages, at least one of the plurality of substantially circular passages being positioned on the horizontal wall, a boundary wall of the lower chamber being formed by the heat exchanging interface;

the heat exchanging interface is adapted to provide separable thermal contact between the processing unit and the cooling liquid such that heat is dissipated from the processing unit to the cooling liquid as the cooling liquid passes through the lower chamber of the reservoir; and

the pump is adapted to direct the cooling liquid through the upper chamber and the lower chamber of the reservoir, the pump including a motor having a rotor, a stator and an impeller having a plurality of curved blades, the impeller being positioned within the reservoir;

a heat radiator spaced apart from the integrated element, the heat radiator being fluidly coupled to the outlet and the inlet of the reservoir, the heat radiator being configured to circulate the cooling liquid therethrough and exhaust heat from the cooling liquid; and

a fan configured to direct air through the heat radiator, the fan being driven by a motor separate from the motor of the pump.

ECF No. 180-13 at 18 :50-19:18.

The patents issued on August 14, 2012, and August 21, 2012, respectively. ECF No. 180-13 at 2 ; ECF No. 180-14 at 2. Asetek then filed two separate actions in this district against different entities (who are not parties to this action), asserting that their products infringed the patents. See Asetek Holdings, Inc. v. Coolit Sys. Inc. , 12-cv-04498-EMC, ECF No. 1, 2012 WL 3812089 (August 27, 2012) ; Asetek Danmark A/S v. CMI USA, Inc. , 13-cv-00457-JST, ECF No. 1 (January 31, 2013).

The parties agree that Asetek sent a letter to AVC dated April 30, 2014, alleging that the Liqmax 120 product and related products – sold by one of AVC's customers, Enermax – also infringed the patents. ECF No. 1 ¶ 22 ; ECF No. 186 at 20 ; ECF No. 203-12 at 2. After additional correspondence in which AVC apparently responded that it had no relationship to the Liqmax products identified, Asetek sent an email to AVC on August 2, 2014, informing AVC of its belief that "AVC is likely selling other infringing products in the United States." ECF No. 203-12 at 2. Asetek's CEO testified that, in a subsequent meeting, AVC attempted to obtain a license for the patents. ECF No. 202-7 at 241 :20-243-10. AVC does not dispute that the meeting took place.

On September 30, 2014, AVC filed a complaint in the U.S. District Court for the Eastern District of Virginia, requesting declaratory relief that its products – which it designated as the K7 and K9 products – did not infringe the '362 or '764 patents. See ECF No. 1. AVC claimed that (1) the products did not infringe the patents-in-suit; and (2) the patents-in-suit were invalid. See id. After proceedings not directly relevant here, the case was transferred to this Court in December 2016. ECF No. 37.

On July 14, 2017, Asetek filed counter-claims for direct, induced, contributory, and willful infringement, alleging that at least the AVC K7127N, K7 1.5, and K9, and Riotoro Bifrost 120Ti/240 products infringed the '362 and '764 patents. See ECF No. 73. On January 17, 2018, the Court issued its claim construction order. ECF No. 105. Asetek subsequently amended its infringement contentions to cover the AVC 1.5, 2.0, K7127N, and K9 products (the "accused products"). See ECF Nos. 125, 130.

On November 30, 2018, Asetek filed a motion for partial summary judgment on AVC's invalidity and equitable defenses. ECF No. 180. Asetek also filed a motion to strike portions of AVC's expert's non-infringement report. ECF No. 185. AVC filed a cross-motion for partial summary judgment on December 6, 2018, on a series of issues, including its liability for induced, contributory, or willful infringement, as well questions related to extraterritorial sales and Asetek's compliance with product marking requirements. ECF No. 186.

II. EVIDENTIARY OBJECTIONS

Asetek has filed a separate motion to strike portions of Dr. Clarksean's rebuttal non-infringement report. ECF No. 185. In the course of briefing on the motions for summary judgment, Asetek also requested that the Court strike Dr. Clarksean's declaration attached in support of AVC's motion for summary judgment, ECF No. 203 at 20-23, and Dr. Joshi's declaration attached in support of AVC's opposition to Asetek's motion for summary judgment, ECF No. 205 at 5-8. The Court resolves these disputes before reaching the merits of the parties' summary judgment motions.

A. Legal Standard

Federal Rule of Civil Procedure 26(a)(2)(B) requires a witness who is "retained or specially employed to provide expert testimony in the case" to provide a written report containing, among other things, "(i) a complete statement of all opinions the witness will express and the basis and reasons for them," and "(ii) the facts or data considered by the witness in forming them." Fed. R. Civ. P. 26(a)(2)(B). In addition, Rule 26(e)(1) imposes an obligation on a party "who has responded to an interrogatory" to "supplement or correct its disclosure or response (A) in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing." Fed. R. Civ. P. 26(e)(1).

Rule 37, in turn, "gives teeth to Rule 26's disclosure requirements by forbidding the use at trial of any information that is not properly disclosed." Goodman v. Staples The Office Superstore, LLC , 644 F.3d 817, 827 (9th Cir. 2011) (internal quotation marks and citation omitted).³ Rule 37(c)(1) thus requires exclusion unless the offending party carries its burden "to demonstrate that the failure to comply with Rule 26(a) is substantially justified or harmless." Torres v. City of Los Angeles , 548 F.3d 1197, 1213 (9th Cir. 2008). For instance, where an expert fails to provide a theory in the report, a court may "preclud[e] him from testifying on this issue." Nationwide Transp. Fin. v. Cass Info. Sys., Inc. , 523 F.3d 1051, 1062 (9th Cir. 2008) ; see also Paladin Assocs., Inc. v. Montana Power Co. , 328 F.3d 1145, 1164 (9th Cir. 2003) (applying Rule 37(c)(1) where "expert witnesses submitted affidavits that contained new opinions not previously disclosed as required by Federal Rule of Civil Procedure 26(a)(2)(B)"); Hoffman v. Constr. Protective Servs., Inc. , 541 F.3d 1175, 1179 (9th Cir. 2008) (applying Rule 37(c)(1) to a violation of Rule 26(e)(1)(A) ).

B. Dr. Clarksean's Rebuttal Non-Infringement Report

Asetek requests that the Court strike from Dr. Clarksean's report the theory that the K9 and M5 products do not infringe the '764 patent because the pump stator of those products is not "isolated from the cooling liquid." ECF No. 185 at 6. Asetek argues that AVC failed to disclose this theory in its answer to Asetek's August 2, 2017 interrogatory requesting the factual and legal bases for AVC's non-infringement contentions. See ECF No. 185-2 at 3-4; ECF No. 185-3. Instead, Asetek contends, AVC advanced this theory for the first time in Dr. Clarksean's rebuttal report, which it served on October 26, 2018. ECF No. 185 at 8; ECF No. 185-1 ¶ 9.

In its opposition, AVC first argues that it was not required to supplement its interrogatory response with these details, and therefore did not violate Rule 26(e)(1). ECF No. 199 at 10-11, 13. AVC reasons that, because Asetek bears the burden of proof on the question of infringement, AVC did not need to "divulge its fully-crystallized non-infringement arguments upon which [it] would rely at trial, because the deadline for AVC's rebuttal expert report on...