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Sloan Valve Company, A Delaware Corporation v. Zurn Industries

December 13, 2012

SLOAN VALVE COMPANY, A DELAWARE CORPORATION, PLAINTIFF,
v.
ZURN INDUSTRIES, INC., A DELAWARE CORPORATION, AND ZURN INDUSTRIES, LLC, A DELAWARE LIMITED LIABILITY COMPANY, DEFENDANTS.



The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge:

MEMORANDUM OPINION AND ORDER

Plaintiff Sloan Valve company ("Sloan") brings this patent infringement action against Defendants Zurn Industries, Inc. and Zurn Industries, LLC (collectively, "Zurn"). Zurn now moves for leave to amend its final non-infringement, invalidity, and unenforceability contentions. (R. 419.) For the reasons discussed below, the Court grants Zurn's motion in part and denies it in part. In addition, the Court strikes those portions of Sloan's Amended Final Infringement Contentions that are not relevant to the parties' dispute regarding provisional remedies under Section 154(d) and are therefore outside the scope of the Court's October 2, 2012 Order.

BACKGROUND

This case concerns U.S. Patent No. 7,607,635, entitled "Flush Valve Handle Assembly Providing Dual Mode Operation" (the "'635 Patent" or the "Wilson Patent"), and the corresponding U.S. Patent Application Publication No. 2006/0151729 (the "Published Wilson Patent Application"). On January 13, 2010, Sloan commenced this action against Zurn seeking (a) damages and injunctive relief for Zurn's alleged infringement of the '635 Patent; and (b) provisional damages for Zurn's alleged making, sale and use of inventions that the Published Wilson Patent Application covers. (See R. 1, Compl. ¶¶ 34-38.)

On August 15, 2012, Zurn filed a motion for partial summary judgment on Count II arguing that Sloan is not entitled to provisional remedies based on Claims 7, 8 and 12 of the '635 patent. (R. 364, at 1-2.) Specifically regarding claims 7 and 8, Zurn argued that because Sloan did not allege direct infringement of those claims, they were not entitled to provisional damages. See id. ("[P]rovisional rights are limited to those instances where a party 'makes, uses, offers for sale, or sells in the United States the invention.' It is undisputed that Zurn does not "make, use, offer for sale, or sell" in the United States the allegedly novel methods claimed in Claims 7 and 8 - the remaining claims asserted in Count II.") In order to address this issue in part, on September 11, 2012, Sloan filed a motion seeking leave to amend its final infringement contentions regarding Count II of its Amended and Supplemental Complaint.*fn1 (R. 385.) Sloan explicitly requested "that the Court enter an order permitting Sloan to amend its Final Infringement Contentions against [Zurn] to specifically recite Sloan's claim for provisional damages relating to Zurn's pre-issuance activities." (R. 385, at 1) (emphasis added); see also id., at 3 ("Sloan conditionally requests that the Court grant it leave to amend its Final Infringement Contentions to add its bases under Section 154(d) for claiming provisional damages against Zurn.") Two days later, on September 13, 2012, the Court issued its claim construction ruling. (Dkt 391.)

At a hearing on October 2, 2012, the Court granted Sloan's Motion for Leave to Amend Its Final Infringement Contentions to specifically recite Sloan's claims for provisional damages relating to Zurn's pre-issuance activities as requested by Sloan. (R. 399.) On October 9, 2012, Sloan submitted its Amended Final Infringement Contentions. (R. 419-5, Sloan's Amended Final Infringement Contentions.)

At issue in this order is Zurn's Motion seeking Leave to Amend its Final Non-Infringement and Invalidity/Unenforceability Contentions. (R. 419.) The Court grants Zurn's motion in part. The Court further strikes those portions of Sloan's Amended Final Infringement Contentions, filed on October 9, 2012, that are not relevant to the parties' dispute regarding provisional remedies under Section 154(d) as they are outside the scope of the Court's October 2, 2012 Order granting Sloan leave to amend.

LEGAL STANDARD

I. Amending Final Contentions

The primary rule governing Zurn's request is Local Patent Rule 3.4, which provides that a party may amend its final infringement contentions only by order of court "upon a showing of good cause and absence of unfair prejudice to opposing parties made promptly upon discovery of the basis for the amendment." L.P.R. 3.4; see also Fujitsu Ltd. V. Tellabs Ops., Inc., Nos. 08 C 3379, 09 C 4530, 2012 WL 5444979, at *4 (N.D. Ill. Mar. 21, 2012). The purpose of these patent rules is to "prevent a 'shifting sands' approach to claim construction by forcing the parties to 'crystallize their theories of the case early in litigation.'" Fujitsu, 2012 WL 5444979 at *4 (citations omitted). Specifically, "[t]he purpose of infringement contentions is to provide notice of the plaintiff's theories of infringement early in the case because, in practice, it is difficult to obtain such information through traditional discovery means, such as interrogatories." Id.

II. Motion to Strike

Federal Rule of Civil Procedure 12(f) provides that a district court "may strike from a pleading an insufficient defense or any redundant, immaterial, impertinent, or scandalous matter. (Fed. R. Civ. Proc. 12(f); see also Delta Consulting Group, Inc. v. R. Randle Const., Inc., 554 F.3d 1133, 1141 (7th Cir. 2009).) The Court may either strike on its own or on a motion by a party and has considerable discretion in striking any redundant, immaterial, impertinent or scandalous matter. (Id.; Talbot v. Robert Matthews Distrib. Co., 961 F.2d 654, 665 (7th Cir. 1992).)

ANALYSIS

Here, Zurn argues that Sloan "took the liberty of further amending its contentions beyond the leave requested in its motion." (R. 427, at 1.) The Court agrees with Zurn and hereby strikes those portions of Sloan's Amended Final Infringement Contentions that go beyond the Court's October 2, 2012 Order. Specifically, the Court finds that certain amendments made by Sloan went beyond the scope explicitly requested and granted in open Court on October 2, 2012, and strikes ...


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