Summer Infant (USA), Inc. v. Tomy Int'l, Inc.
| Decision Date | 24 October 2019 |
| Docket Number | C.A. No. 17-549MSM |
| Parties | SUMMER INFANT (USA), INC., Plaintiff/Counter Defendant, v. TOMY INTERNATIONAL, INC., Defendant/Counter Claimant. |
| Court | U.S. District Court — District of Rhode Island |
This case arises from U.S. Patent No. 6,578,209 ("'209 Patent"), titled "Tubs for Bathing Infants and Toddlers," which issued on June 17, 2003, and is owned by Defendant TOMY International, Inc. ("TOMY"). Plaintiff Summer Infant (USA), Inc., ("Summer Infant") designs, markets and distributes an infant/toddler bathing tub (the "Accused Product"); on November 14, 2017, TOMY sent Summer Infant a cease and desist letter, asserting that the Accused Product infringes the '209 Patent. Summer Infant responded by initiating this action seeking a declaration that the Accused Product does not infringe. TOMY counterclaimed alleging infringement. Summer Infant's answer to the counterclaim included an affirmative defense and a counterclaim to TOMY's counterclaim; both alleged that the '209 Patent is invalid. ECF No. 10 at 5 (); see id. at 9 (same).
Despite having asserted this affirmative defense, Summer Infant delayed in serving its fourth supplementation of its interrogatory answers, which included the second supplementation of the response to Interrogatory No. 2, the contention interrogatory on invalidity, until the brink of the close of fact discovery. In reliance on an admittedly non-disclosed reference (the "'741 Patent"), on the last day, it sought and obtained an extension of the fact discovery deadline of two weeks after the completion of a pending Fed. R. Civ. P. 30(b)(6) deposition for the purpose of supplementing this answer. On July 2, 2019, Summer Infant served its fourth supplemental answers, which included a new and much longer answer to Interrogatory No. 2. Arguing that Summer Infant's motion to extend was disingenuous and, in any event, that the Court's extension was narrowly limited to the '741 Patent, the non-disclosed reference, TOMY contends that Summer Infant's more expansive supplementation is a material and prejudicial violation of the Court's Amended Scheduling Order (ECF No. 22), as amended and as extended by the Court's Text Order of May 14, 2019, (the "pretrial order"). TOMY has asked the Court to sanction Summer Infant by excluding the fourth interrogatory supplementation in its entirety, a consequence that Summer Infant contends is a death-knell sanction that would effectively be dispositive of its defense of invalidity.
TOMY's motion to exclude (ECF No. 42) has been referred to me for determination pursuant to 28 U.S.C. § 636(b)(1)(A).1 For the reasons that follow, it is denied.
During the fact discovery phase of this case (which ended on May 10, 2019), TOMY appropriately propounded contention Interrogatory No. 2 to explore "Summer Infant's legal and factual basis for its invalidity contentions related to the '209 Patent." ECF No. 42-3 at 3. In its initial response, Summer Infant supplied an answer that it now says was a mistake: ECF No. 42-4 at 4. In reliance on this answer, TOMY did not include the affirmative defense of invalidity in its Fed. R. Civ. P. 30(b)(6) deposition topic list, and, when asked about invalidity, Summer Infant's Fed. R. Civ. P. 30(b)(6) deposition designee, who was not prepared on invalidity, testified that he did not have "an understanding as to the factual basis for th[e invalidity] allegation." ECF No. 42-7 at 4. It seemed to TOMY that the affirmative defense of invalidity had been abandoned.
On March 29, 2019, still well prior to the close of fact discovery,2 Summer Infant shifted course. It supplemented its interrogatory answer on invalidity, averring that the '209 Patent is invalid as obvious in view of "at least" eight references - "individually or in combination" - listed in the answer. ECF No. 42-5 at 3. This new answer to Interrogatory No. 2 also asserts that the '209 Patent is invalid under 35 U.S.C. § 112 because "its specification is insufficient," as well as because the claims fail to inform one skilled in the art with reasonable certainty about the scope of the invention. Two terms of the '209 Patent (related to nesting and stacking) are highlighted as ambiguous and indeterminate. Importantly, the second supplemental answer advises that further details will be disclosed at the expert phase: "[t]he invalidity of the asserted patent will be the subject of expert testimony." Id. Summer Infant reserved its right to supplement again "in accord with the Federal Rules of Civil Procedure and the scheduling order in this case." Id. at 4.
In response to the second supplemental answer, TOMY did not ask to reopen Summer Infant's Fed. R. Civ. P. 30(b)(6) deposition; instead, it promptly (on April 12, 2019) advised Summer Infant that it considered this superficial articulation of invalidity to be deficient: "thereis no indication as to what combination or combinations are being made, what combination applies to what claim or claims, which claimed features are supposedly disclosed by which prior art, how one would combine the art, or the reasons that a person of ordinary skill in the art would have made any such combination." ECF No. 53-2. In its email, TOMY previewed its perspective that it considers each of these matters as "factual questions," implying, though not directly stating, that a more detailed iteration of the foundation for the invalidity defense needed to be provided before the close of the fact discovery period. Summer Infant's April 16, 2019, reprise alerted TOMY to its intent to supplement again before the close of fact discovery. And at approximately the same moment, Summer Infant discovered (for the first time) the existence of the '741 Patent, which is a design patent for a tub sold by TOMY's predecessor that Summer Infant immediately concluded potentially would impact the validity of the '209 Patent.
On May 10, 2019, fact discovery closed. On the same day, instead of serving the supplement to Interrogatory No. 2 mentioned in its April 16, 2019, email to TOMY, Summer Infant asked the Court for a limited (fourteen-day) extension of the fact discovery period to supplement its invalidity interrogatory response. ECF No. 27. The motion argued that Summer Infant had just become aware of previously undisclosed prior art (the '741 Patent) and that it needed to explore this as a topic during the ongoing Fed. R. Civ. P. 30(b)(6) deposition3 of TOMY's designee. It asked for time to evaluate the '741 Patent and for an extension of the fact discovery period to supplement its answer to Interrogatory No. 2. Opposing the motion, TOMY argued that the '741 Patent is not really new because it mirrors another patent, "GB 2193887," which had been disclosed. Notably, TOMY did not ask for leave to reopen Summer Infant'sFed. R. Civ. P. 30(b)(6) deposition as a condition of granting the extension. The motion to extend was granted on May 14, 2019:
Without deciding about the timeliness or thoroughness of discovery, the Court determines that it is in the interest of justice to allow the Plaintiff to supplement its responses based on the information it claims has recently come to its attention. The Plaintiff shall have until 14 days after the completion of the 30(b)(6) deposition of Defendant to supplement its answer to interrogatory No. 2.
ECF No. 42-2 at 2. After the Fed. R. Civ. P. 30(b)(6) deposition ended, on July 2, 2019, Summer Infant timely served its fourth supplemental answers, which included the challenged new answer to Interrogatory No. 2,4 amplifying its position on invalidity, as well as a new answer to Interrogatory No. 3, which asks about noninfringement and claims construction.5 ECF No. 42-1.
Unlike the one-page second supplemental answer to Interrogatory No. 2 regarding invalidity, the fourth supplemental answer on invalidity is fifteen pages long. ECF No. 42-1 at 4, 13-28. By contrast with the earlier iteration, it is a set of minutely granulated responses; the answer goes claim-by-claim and phrase-by-phrase through the '209 Patent, as to each, individually stating each ground for invalidity in far more detail than before. Most of these now granulated responses rely on obviousness based on the newly discovered reference, the '741 Patent, either alone or in combination with the eight references that were listed in the secondsupplemental answer, as well as with other references from the record or the public sphere (images from the '209 prosecution history and four other publicly available patents). Several of the responses, either alone or in combination with other references, now also rely on GB 2193887, the patent raised by TOMY in its opposition to the motion to extend. Still others take a deeper dive into matters that were superficially noted in the prior answer's generic assertion that the claims are each invalid under § 112 because the "specification is insufficient" and because each lacks sufficient "certainty" to inform a person skilled in the art about the scope of the invention. These assertions are now recast in far greater detail identifying specific claims and terms as indefinite, as failing to provide an adequate description, or for non-enablement of the invention.
To the Court's perhaps untutored eye, other than the reference to GB 21938876 and the '741 Patent, the new iteration of the invalidity interrogatory answer largely appears to be a minutely granulated version of the vague and superficial second...
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