United States District Court, D. Maryland
CHANGZHOU KAIDI ELECTRICAL CO., LTD., et al.
OKIN AMERICA, INC., et al
For Changzhou Kaidi Electrical Co., Ltd., Kaidi LLC, Plaintiffs, Counter Defendants: Gary M Hnath, LEAD ATTORNEY, Mayer Brown LLP, Washington, DC; Jack Shaw, PRO HAC VICE, Mayer Brown LLP, New York, NY; John X Zhu, PRO HAC VICE, Mayer Brown LLP, Washington, DC.
For Okin America, Inc., Dewert Okin GmbH, Defendants: James Richard Jeffcoat, Francis Joseph Gorman, Gorman and Williams, Baltimore, MD; John T Johnson, Michael Autuoro, PRO HAC VICE, Fish and Richardson PC, New York, NY.
For Okin America, Inc., Counter Claimant: John T Johnson, Michael Autuoro, PRO HAC VICE, Fish and Richardson PC, New York, NY; Francis Joseph Gorman, Gorman & Williams, Baltimore, MD.
For Dewert Okin GmbH, Okin America, Inc., Counter Claimants: John T Johnson, Michael Autuoro, PRO HAC VICE, Fish and Richardson PC, New York, NY; Francis Joseph Gorman, James Richard Jeffcoat, Gorman and Williams, Baltimore, MD.
For Okin America, Inc., Counter Claimant: John T Johnson, Michael Autuoro, PRO HAC VICE, Fish and Richardson PC, New York, NY; James Richard Jeffcoat, Gorman and Williams, Baltimore, MD.
Catherine C. Blake, United States District Judge.
Changzhou Kaidi Electrical Co. and Kaidi, LLC (together, " Kaidi" ) seek a declaratory judgment that the KDPT005 linear actuator does not infringe United States Patent Number 5,927,144 (" the '144 patent" ), which Dewert Okin GmbH owns by assignment and which it and Okin America, Inc. (together, " Okin" ) practice via manufacture of the Okin Betadrive linear actuator. Okin, in turn, alleges that the KDPT005 infringes that patent. Okin now moves for summary judgment on its infringement claim, as it has once before. And Kaidi moves for partial summary judgment on the question of willfulness, arguing that its infringement, if any, was not objectively reckless. In addition, both parties have filed many motions in limine, seeking to exclude evidence pertaining to infringement, damages, and other matters. Several of those motions in limine bear on the substance of the parties' motions for summary judgment. Those motions in limine, along with the related motions for summary judgment, have been fully briefed and no hearing is necessary to their resolution. See Local Rule 105.5 (D. Md. 2014). The remaining motions in limine will be resolved separately at a later date.
For the reasons below, Okin's renewed motion for summary judgment on the question of infringement will be denied, while Kaidi's motion for partial summary judgment of no willfulness will be granted. Okin's related motions in limine to preclude one of Kaidi's witnesses from altering his deposition testimony via Federal Rule of Civil Procedure 30(e)(1), to preclude evidence underlying Kaidi's unfair competition claims, to preclude evidence that Okin withdrew its complaint from the International Trade Commission, and to preclude evidence concerning marking of its Betadrives with patent warnings will all be granted. Okin's motion to preclude Kaidi's expert from testifying as to an interpretation of the patent allegedly inconsistent with this court's claim construction will be granted in part and denied in part, and its motion to preclude Kaidi's expert from testifying as to testing of the accused device allegedly inconsistent with the court's claim construction will be denied. Last, Kaidi's motion to preclude the presentation of evidence concerning willful infringement will be denied as moot.
Okin produces and sells linear actuators, including the Okin Betadrive, throughout the United States. (First Am. Compl. 2-3, ECF No. 24; Answer First Am. Compl. 2, ECF No. 34.) Kaidi produces and imports into the United States linear actuators, including the KDPT005. (First Am. Compl. 2; Answer First Am. Compl. 2.) Okin asserts ownership of the '144 patent, which it allegedly practices via the manufacture and sale of its Betadrive. (First Am. Compl. 5; Answer First Am. Compl. 3.) Okin contends that Kaidi's KDPT005 infringes claim 1 of the '144 patent and one or more of the patent's other claims, each of which depends on claim 1. (Counterclaim 18-19, ECF No. 34.) Kaidi, in turn, seeks a declaratory judgment that its KDPT005 infringes no valid and enforceable claim of the '144 patent, among other causes of action. (First Am. Compl. 8-9.)
Claim 1 of the '144 patent, which is incorporated by reference into claims 2 and 26-28, describes a " guide section" that, among other things, surrounds the actuator's spindle. See Patent '144 col.6 ll.13-28. After a hearing pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), this court previously issued a memorandum and order construing components of the claims contained in the '144 patent. (ECF Nos. 63, 64.) It construed the " guide section" as a " two-part component that guides a moving part." (Mem. 5, ECF No. 63.) Okin identifies two parallel metal components surrounding the KDPT005's spindle as the requisite two parts of the device's guide section, highlighting the apparent similarity between those components and drawings of the embodiment of the patented invention disclosed in the patent's specification. Kaidi, however, asserts that the alleged " guide section" of its KDPT005 includes only one component that guides the slider incorporated into that device; it describes the remaining component identified by Okin as a " spindle cover." In a previous motion for summary judgment, Kaidi asserted that the KDPT005's spindle cover is " designed to prevent grease from dripping from the spindle and to achieve a decorative effect, not to guide a moving part along a linear path." (Kaidi Cross-Mot. Partial Summ. J. 6, ECF No. 77-1.) Accordingly, Kaidi concludes, the KDPT005 lacks one of the requisite two parts that make up the patented " guide section" and thus lies beyond the claim's limitations.
The parties previously described their positions on the question of infringement in cross motions for summary judgment, both of which the court largely denied. ( See Order, ECF No. 98.) Now, after the completion of expert discovery, the parties have moved again for summary judgment and filed a host of motions of limine.
I. Motions In Limine
A motion in limine seeks " to exclude anticipated prejudicial evidence before the evidence is actually offered." Luce v. United States, 469 U.S. 38, 40 n.2, 105 S.Ct. 460, 83 L.Ed.2d 443 (1984). Such motions are " designed to narrow the evidentiary issues for trial and to eliminate unnecessary trial interruptions." Louzon v. Ford Motor Co., 718 F.3d 556, 561 (6th Cir. 2013) (quoting Bradley v. Pittsburgh Bd. of Educ., 913 F.2d 1064, 1069 (3d Cir. 1990)). Okin seeks to strike from the record and exclude from trial an errata sheet submitted by a Kaidi engineer, Genxing Zhu, to alter his deposition testimony. (ECF No. 131.) And it moves to prohibit Kaidi's expert, Dr. William Howard, from explaining to the jury his understanding of the patent, which is allegedly inconsistent with this court's prior claim construction, and from presenting the results of experiments allegedly premised on that inconsistent interpretation of the patent. (ECF Nos. 133, 144.)
A. Zhu's Errata Sheet
Okin moves to strike from the record and preclude testimony concerning an errata sheet that Genxing Zhu submitted after his deposition in an effort to alter his testimony. That motion will be granted.
Zhu is the Kaidi engineer who spearheaded the development of the KDPT005. ( See Mot. In Limine Concerning Zhu's Errata Sheet Ex. 2, Interrogatory Response 24, at 23, ECF No. 190-1.) He is a Mandarin speaker who does not speak English and had never before been deposed. ( See Zhu Tr. 9:19-21, 11:4-7.) Kaidi represents that he testified at his deposition with the assistance of two translators. ( See Opp. Mot. In Limine Concerning Zhu's Errata Sheet 2, ECF No. 166.)
During Zhu's deposition, Okin's counsel asked Zhu about the function of the metal component of the KDPT005 that Kaidi describes as a " spindle cover" in this litigation, but that Zhu and Okin's counsel sometimes referred to as " guide rail A" during Zhu's deposition. ( See, e.g., Zhu Tr. 249:8, 250:19, 12/6/14.) After labelling by hand a photograph of the KDPT005, which was marked as Exhibit 12, Zhu indicated that " [g]uide rail A, the cover here can prevent the slider from moving toward the Y minus direction." ( Id. at 250:19-21.) According to the marked-up reproduction of Exhibit 12 included in Okin's motion, the " Y minus direction" is away from the component that Kaidi describes as a guide rail; movement in the y-plus direction is directly toward that guide rail. ( See Mot. In Limine Concerning Zhu's Errata Sheet 2.) Zhu indicated that the putative spindle cover " does not prevent the slider from moving to the other direction of the Y axis," presumably in reference to the y-plus direction, or toward the guide rail. (Zhu Tr. 250:5-6, 12/6/14.)
Roughly five weeks after that deposition, Zhu sought to change his testimony by submitting a signed errata sheet pursuant to Federal Rule of Civil Procedure 30(e)(1). In it, he explained:
The question was unclear and confusing about whether it was referring to just the cover or the cover in combination with the guide. In theory, without the guide, the slider may potentially touch the cover if there is a sufficiently large force in the Y minus direction, but in practice with the guide in place, the cover does not restrict movement of the slider in the minus Y direction because the guide restricts movement in that direction first. With the guide in place, the cover does not affect the movement of the slider and the slider will function the same without the cover.
( See Second Nese Decl. Ex. H, Errata Sheet, ECF No. 177-5.)
Federal Rule of Civil Procedure 30(e)(1) permits a deponent to " review the transcript" and " if there are changes in form or substance, to sign a statement listing the changes and the reasons for making them." Authority is divided on the permissible scope of such alterations. While " [s]ome courts have determined that the rule places no limitation on changes," others " have determined that the rule permits changes of substance only to the extent the proposed alteration is consistent with the deponent's testimony." EBC, 618 F.3d at 267; see also id. at 267 nn.14 & 15. The Fourth Circuit has not opined on the appropriate standard. See, e.g., Harden v. Wicomico Cnty., 263 F.R.D. 304, 307 (D. Md. 2009) (noting the absence of " controlling authority in the Fourth Circuit" ). But " [r]ecent decisions of this Court have adhered to the latter approach," forbidding changes that contradict a deponent's previous testimony. Lane v. Sys. Application & Techs., Inc., Civ. No. DKC-13-3566, 2015 WL 1013449, at *3 (D. Md. Mar. 6, 2015) (quoting Md. Elec. Indus. Health Fund v. MESCO, Inc., Civ. No. ELH-12-505, 2014 WL 853237, at *16 (D. Md. Feb. 28, 2014)). " [A] growing minority" of courts endorses this interpretation, Harden, 263 F.R.D. at 308, including most recently the Third Circuit, see EBC, 618 F.3d at 268.
Here, Zhu's proposed alterations directly contradict his sworn testimony without an adequate explanation for that reversal. Although Zhu testified that the spindle cover can restrict the slider's movement in one direction, he now seeks to amend that answer as merely theoretical in light of the presence of the guide rail. ( Compare Zhu Tr. 250:5-6, 19-21, 12/6/14, with Errata Sheet.) By way of explanation, he emphasizes that the question did not specify whether the spindle cover could impose such a restriction independently or " in combination with the guide[rail]." (Errata Sheet.) The question presented to him forecloses that explanation. Zhu was asked whether the spindle cover could " help prevent the slider from shifting in the Y direction?" (Zhu Tr. 249:8-9, 12/6/14 (emphasis added).) That formulation necessarily implies that any restriction imposed by the cover need not be independent but may be in aid of another component also limiting the slider's range of motion. Moreover, the deposition exhibit to which Zhu referred in answering the question depicted both the KDPT005 guide rail and its spindle cover, further implying that his answer referred to the operation of the fully assembled device.
Kaidi retorts that Zhu's language skills and inexperience render his confusion reasonable. But that linguistic objection does not respond to the implications of the exhibit, which depicted an image of the fully assembled device to which Zhu referred in answering the question. And although the limited record presented here confirms that Zhu could not speak English and had never before been deposed, it otherwise highlights Zhu's semantic competence. Zhu rejected the propriety of counsel's question, offering a more sophisticated variant of it that nonetheless repeated the " help prevent" formulation counsel had initially offered. " The way you put it was not quite correct," Zhu explained during his deposition. (Zhu Tr. 249:21-22, 12/6/14.) " When you said does guide rail A help prevent the slider from moving in the Y direction, it only help preventing the slider from moving in one direction along the Y axis. It does not prevent the slider from moving to the other direction of the Y axis." ( Id. at 249:22- 250:6 (emphases added).) Zhu's modification of the question indicates that he understood it at a high level of sophistication. Kaidi offers no reason to believe that he did not also understand the implications of the " help prevent" formulation that counsel initially presented to him and that he dutifully repeated.
What little else of the transcript is included in the record further confirms Zhu's semantic sophistication. Moments after answering his own, reformulated question, Zhu corrected the language he and counsel had used to describe the component in question. " [I]t is not called guide rail A," he admonished counsel. " It is the cover." (Zhu Tr. 251:5-6, 12/6/14.) And although Zhu appears to have testified on technical engineering matters over the course of at least two days, his only corrections to the record are the modifications discussed here. If Zhu's translators were not up to the task of ...