UTEX INDUSTRIES, INC. v. GD Energy Products, LLC

• Court: District Court, W.D. Texas
• Decided: February 26, 2025
• Docket: 7:24-cv-00170
• Status: Unknown

Opinion

IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF TEXAS MIDLAND-ODESSA DIVISION

UTEX INDUSTRIES, INC., Plaintiff, v. C.A. No. 7:24-cv-00170-DC-DTG GD ENERGY PRODUCTS, LLC, Defendant.

ORDER ON FEBRUARY 11, 2025 DISCOVERY DISPUTE On February 3, 2025, Plaintiff UTEX Industries, Inc. submitted a discovery dispute chart (below) seeking an order compelling Defendant GD Energy Products, LLC to “supplement its preliminary invalidity contentions by identifying a reasonable number of specific obviousness combinations, including identification for each combination of where in the prior art references from each combination each element of the asserted claims are found.” The Court held oral argument by teleconference on February 11, 2025 on the discovery dispute. The parties’ positions on the discovery dispute are identified in the chart below: UTEX’s Position GD Energy’s Position On December 4, 2024, GDEP served its GDEP’s Preliminary Invalidity Contentions preliminary invalidity contentions on UTEX. fully comply with OGP 4.4 for Patent Cases The contentions do not identify any and the Scheduling Order which require obviousness combinations under which GDEP “preliminary invalidity contentions in the form may argue that the asserted patents are invalid. of (1) a chart setting forth where in the prior art Instead, the cover pleading broadly states: references each element of the asserted “The Defendant reserves the right to rely on claim(s) are found[.]” GDEP has done that, any combination of art Defendant has charted providing 18 charts for each Asserted Patent, in its Preliminary Invalidity Contentions as identifying specifically where each element of well as any combinations disclosed in the the asserted claims is found in the prior art. In prosecution histories of the references cited an attempt to avoid burdening the Court with herein.” Ex. A at 24. GDEP’s supplement to this issue, GDEP supplemented its contentions its contentions states that “it would have been to identify combinations. Ex. C. Thus, UTEX obvious to a POSITA to combine the shape has more than sufficient notice of GDEP’s disclosed in any one of the [18] references in obviousness theories. UTEX’s arguments to Table 1 with the fabric teachings of any [of the the contrary are unsupported and should be 28] reference[s] in Table 2, or to modify the moot. disclosures in any one of the references in Table 1 based on the fabric teachings of any UTEX takes issue with the number of possible reference in Table 2”—resulting in around 500 combinations, but UTEX has not identified a possible combinations of 2 references, or single rule or case that requires GDEP to exponentially more if combining more than 2 narrow its preliminary invalidity contentions references. See Ex. C at 1-4. This effort by at this stage. And despite UTEX’s demands GDEP to obscure its obviousness theories that GDEP identify “a reasonable number of behind an unreasonable number of possible specific obviousness combinations,” UTEX combinations, most of which GDEP surely has refused specify what number of knows even at this early stage that it will never combinations would be “reasonable.” The include in its expert report, much less bring to assertion of 29 unique references is not trial, is not sufficient to provide UTEX with unusual or excessive at this stage. fair notice of GDEP’s obviousness contentions. Claim construction is ongoing and UTEX has not yet explained the plain and ordinary “[T]he purpose of invalidity contentions is to meanings of the disputed terms. Fact provide notice….” Pisony v. Commando discovery will not begin until April and the Constrs., Inc., No. 6:17-CV-00055-ADA, deadline for serving final contentions occurs 2020 WL 4934463, at *1 (W.D. Tex. Aug. 24, later in the case. Dkt. 23 at 2. GDEP, 2020) (quoting Realtime Data, LLC v. T- respectfully, should not be expected to narrow Mobile, U.S.A., Inc., No. 6:10CV493, 2013 its invalidity contentions at this early stage. WL 12149180, at *3 (E.D. Tex. Feb. 8, 2013)). Virginia Innovation Scis., Inc. v. Amazon.com, Such notice is necessary to allow UTEX to Inc., No. 4:18-CV-474, 2020 WL 1275786, at consider GDEP’s obviousness theories during *4 (E.D. Tex. Mar. 17, 2020) (rejecting claim construction and in discovery. However, plaintiff’s complaint that defendants’ GDEP’s reservation of a right to assert any preliminary invalidity contentions were combination of references fails to provide deficient for failing to identify specific UTEX with the necessary notice. See Realtime obviousness combinations). Further, UTEX’s Data, LLC v. Packeteer, Inc., 2009 WL infringement contentions provide conflicting 4782062, at *3 (E.D. Tex. Dec. 8, 2009) readings of the claim language as applied to (“Language preserving a defendant an GDEP’s product. GDEP cannot narrow its opportunity to later rely upon undisclosed responsive invalidity contentions with such combinations does not ‘clearly suggest’ the uncertainty from UTEX’s infringement and combination.”). claim construction positions.

The Scheduling Order required GDEP to Contrary to UTEX’s assertion, Judge provide “a chart setting forth where in the prior Albright’s ruling does not mandate disclosure art references each element of the asserted of specific obviousness contentions in claim(s) are found.” Dkt. No. 23 at 1. This preliminary invalidity contentions. That case mirrors language for invalidity contentions involved UTEX’s current counsel, who did not established by Judge Alan Albright, who has identify obviousness combinations in interpreted that requirement to include preliminary (or final) contentions, maintained disclosure of a list that “includes the 103 the contentions provided sufficient notice at designations.” Ex. B= at 10:12-20.| that stage, and contended they were not Specifically, Judge Albright specified that | required to identify combinations until expert simply identifying “10 or 20 individual 102 | discovery. Ex. D at 2-3. Judge Albright did pieces of art, any of which might be combined | not strike defendant’s invalidity contentions, with each other” was insufficient, and that the | but rather ordered defendant to narrow the art contentions should identify “103 | it intends to rely on in good faith one month combinations.” Id. Judge Albright | before expert reports were due. Ex. B at 7. specifically rejected the argument, also made | “[T]he purpose of invalidity contentions is to by GDEP here, that the language defining the | provide notice while discovery is intended to requirements for invalidity contentions does | develop details so that legal theories become not include disclosure of obviousness | more concrete as the litigation progresses.” combinations. See id. at 4:10-5:15. The fact | Pisony v. Commando Constrs., Inc., No. 6:17- that Judge Albright’s ruling concerned final | CV-00055-ADA, 2020 WL 4934463, at *1 invalidity contentions 1s irrelevant, as the same | (W.D. Tex. Aug. 24, 2020). Regardless, scheduling order language applies to GDEP’s | GDEP has _ provided its obviousness preliminary invalidity contentions. combinations, has supplemented with what it can at this stage of the case and will continue UTEX’s Requested Relief: to do so as the case progresses. But GDEP Order that “GDEP 1s required to supplement its | should not be expected to prove its invalidity preliminary invalidity contentions by | case at this stage. See id. at *1. identifying a reasonable number of specific obviousness combinations, including | GDEP’s Requested Relief: identification for each combination of where in the prior art references from each combination | GDEP respectfully requests the Court deny each element of the asserted claims are found.” | UTEX’s requested relief. Having considered the parties’ positions, and GD Energy’s statement that it is limiting its obviousness combinations to one geometry reference combined with one fabric reference, which are identified in Exhibit C to the charts that were submitted to the Court—for a total of 504 possible combinations—at the preliminary invalidity contention stage, the Court DENIES UTEX’s requested relief. SIGNED this 26th day of February, 2025.

DEREK T. GiLLIZA . Ife T SMa