ARIGNA TECHNOLOGY LIMITED, Plaintiff, v. NISSAN MOTOR COMPANY, LTD., et al., Defendants Case No. 2:22-cv-00126-JRG-RSP United States District Court, E.D. Texas, Marshall Division Signed September 19, 2022 Filed September 20, 2022 Counsel Matthew R. Berry, Steven M. Seigel, Andres C. Healy, Danielle M. Nicholson, Emily Anne Parsons, John Edward Schiltz, Rachel S. Black, Susman Godfrey LLP, Seattle, WA, Andrea Leigh Fair, Charles Everingham, IV, Claire Abernathy Henry, Garrett C. Parish, Johnny Ward, Jr., Ward, Smith & Hill, PLLC, Longview, TX, Bryce Thomas Barcelo, Meng Xi, Thomas V. DelRosario, Susman Godfrey, LLP, Houston, TX, Oleg Elkhunovich, Susman Godfrey LLP, Los Angeles, CA, for Plaintiff. Patrick A. Lujin, Basil Trent Webb, Mary Jane Peal, Omowunmi Soyinka, Shook Hardy & Bacon LLP, Kansas City, MO, Andrew Koopman, RatnerPrestia, King of Prussia, PA, David Wynne Morehan, Shook Hardy & Bacon LLP, Houston, TX, John R. Keville, Sheppard Mullin Richter & Hampton LLP, Houston, TX, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, for Defendants Nissan Motor Company, Ltd., Nissan North America, Inc. Aamir A. Kazi, Fish & Richardson PC, Atlanta, GA, Andrew Koopman, RatnerPrestia, King of Prussia, PA, Daniel Robert Gopenko, Ruffin B. Cordell, Fish & Richardson PC, Washington, DC, John R. Keville, Sheppard Mullin Richter & Hampton LLP, Houston, TX, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, Michael Alden Vincent, Fish & Richardson P.C., Dallas, TX, for Defendants Tesla, Inc., Tesla Motors TX, Inc. Andrew David Kasnevich, Kenyon & Kenyon LLP, Washington, DC, Michael A. Oakes, Hunton Andrews Kurth LLP, Washington, DC, Andrew Koopman, RatnerPrestia, King of Prussia, PA, John R. Keville, Sheppard Mullin Richter & Hampton LLP, Houston, TX, Tonya M. Gray, Hunton Andrews Kurth LLP, Dallas, TX, for Defendants Toyota Motor Corporation, Toyota Motor North America, Inc. Victoria Fishman Maroulis, Quinn Emanuel Urquhart & Sullivan LLP, Redwood Shores, CA, Andrew Koopman, RatnerPrestia, King of Prussia, PA, Gregory Blake Thompson, James Mark Mann, Mann Tindel & Thompson, Henderson, TX, John R. Keville, Sheppard Mullin Richter & Hampton LLP, Houston, TX, Jonathan S. Tse, Quinn Emanuel Urquhart & Sullivan LLP, San Francisco, CA, Marissa Rachel Ducca, Quinn, Emanuel, Urquhart & Sullivan LLP, Washington, DC, for Defendant General Motors LLC. Andrew Koopman, Pro Hac Vice, Christopher H. Blaszkowski, Benjamin E. Leace, Karen Riesenburger Poppel, RatnerPrestia, King of Prussia, PA, J. Thad Heartfield, M. Dru Montgomery, The Heartfield Law Firm, Beaumont, TX, John R. Keville, Michelle Cherry Replogle, Robert Lawrence Green, III, Michael C. Krill, Sheppard Mullin Richter & Hampton LLP, Houston, TX, for Defendants ADC Automotive Distance Control Systems GmbH, Conti Temic microelectronic GmbH, Continental AG. Payne, Roy S., United States Magistrate Judge MEMORANDUM ORDER *1 Before the Court plaintiff Arigna Technologies Limited moves to strike evidence related to the marking requirements of 35 U.S.C. § 287. Dkt. Nos. 68, 98. For the following reasons, the motion is GRANTED. I. Background Arigna filed suit against vehicle part supplier Continental[1] and several of its vehicle manufacturer customers[2] alleging infringement of U.S. Patent No. 7,397,318 (“ ‘318 Patent”) directed to a voltage control oscillator for use in a microchip. Case No. 2:22-CV-00054 Dkt. No. 182.[3] Arigna alleges that Continental and the customer defendants manufacture, offer for sale, and/or sell automotive vehicles and components thereof that incorporate the NXP Semiconductors MR2001 chip package (“NXP MR2001 chip”) and that the NXP MR2001 chip infringes the ‘318 Patent. Case ‘54 Dkt. No. 182 ¶¶ 124, 172, 182, 193, 205, 216. On July 1, 2021, Arigna served its infringement contentions on all customer defendants and alleged as to customer defendant Toyota that either or both the Continental ARS4-Series Radar Module and the Denso DNMWR008 Radar Module incorporate a NXP MR2001V chip. Case ‘126 Dkt. No. 68-7 p 2. On July 28, 2021, Arigna served its infringement contentions on Continental alleging the same. Case ‘126 Dkt. No. 98-7 p 2. On August 9, 2021, Arigna served interrogatories on each defendant to identify “all factual and legal bases for each affirmative defense [they] inten[d] to assert that would deny in whole or in part Plaintiff's right of recovery in this action.” Case ‘126 Dkt. No. 68-4 pp 10-11 (Common Interrogatory No. 4, answer and supplements); Case ‘126 Dkt. No. 98-3 pp 13-18 (Common Interrogatory No. 4, answer and supplements). On the same day, Toyota notified Arigna by letter of its belief that Arigna's inclusion of the Denso DNMWR008 module in the infringement contentions was “simply a mistake.” Case ‘126 Dkt. Nos. 68-6, 98-6. Toyota's reasoning for such a belief is as follows: The Denso DNMWR008 millimeter wave radar uses a transceiver supplied by Mitsubishi. Denso has never used the NXP MR2001 chip for any product. Indeed, as you probably realize, the DNMWR008 designation is a FCC code, and if you check the publicly available FCC website, you can see a picture of this product which clearly shows a Mitsubishi transceiver and no sign of the MR2001 chip. We have attached a copy of this photo for your reference. It may be that someone on your team was misled by the fact that this picture shows a different NXP microprocessor, but that microprocessor is clearly marked with the Freescale/NXP product number SC667198MMM, and not MR2001. The SC667198MMM microprocessor serves as an interface between the analog output of the Mitsubishi transceiver and the digital LAN network in the vehicle. It does not contain a voltage controlled oscillator, and it is unrelated to the MR2001 chip or anything claimed in the ‘318 patent. We further understand that Mitsubishi has a license to use the ‘318 patent, and thus Arigna could not assert the ‘318 patent against a transceiver module manufactured by Mitsubishi. *2 Id. On September 27, 2021, Arigna served amended infringement contentions removing any reference to the DNMWR008 module. Compare Dkt. Nos. 68-7 p 2, 98-7 p 2; with 68-8 p 2, 98-8 p 2. On January 6, 2022, the parties moved jointly to amend various deadlines after the claim construction hearing was reset. Case ‘54 Dkt. No. 405. Therein, the parties agreed to set February 4, 2022 as the deadline to complete fact discovery and to file motions to compel discovery. Case ‘54 Dkt. No. 405-1 p 3. The motion was granted. Case ‘54 Dkt. No. 408. On February 2, 2022, the Court stayed the case pending additional guidance on venue from the Federal Circuit in a similar case. Compare Case ‘54 Dkt. No. 464; with In re Volkswagen Group of America, Inc., 28 F.4th 1203 (Fed. Cir. March 9, 2022). On April 27, 2022, the Court lifted the stay and severed Continental and the customer defendants into Case ‘126 with an order to jointly propose an updated schedule of deadlines. Case ‘54 Dkt. No. 467; Case ‘126 Dkt. No. 1. On May 5, 2022, the parties proposed a partially disputed schedule disagreeing as to trial date and the scope of remaining discovery. Case ‘126 Dkt. No. 22. The latter disagreement centered on the defendant's request to allow for outstanding but previously served discovery from Case ‘54. Case ‘126 Dkt. No. 22 pp 5-7, 22-1 p 5. On May 9, 2022, the Court entered an amended Docket Control Order agreeing with Argina as to trial date and with the defendants as to the scope of remaining discovery. The order set June 17, 2022, as the deadline to complete outstanding fact discovery previously-served and to file motions to compel discovery. Case ‘126 Dkt. No. 32 p 4. The scope was further defined by a footnote which reads, “This deadline is solely with respect to previously-served fact discovery that remains outstanding and still needs to be completed. No new fact discovery may be served or requested. Depositions previously noticed by any defendant in the 054 Action are within the definition of previously served fact discovery.” Id. at n 4. Following these limiting instructions, the customer defendants served, from June 1, 2022 to June 3, 2022, supplemental interrogatory responses identifying as unmarked and practicing the ‘318 Patent the chip incorporated in the DNMWR008 module produced by ‘318 Patent licensee Mitsubishi. Case ‘126 Dkt. Nos. 68-4 (Toyota), 68-15 (Nissan), 68-16 (GM), 68-17 (Tesla). Additionally, customer defendant General Motors further served on June 17, 2022, supplemental interrogatory responses identifying as unmarked and practicing the ‘318 Patent sixteen chips produced by ‘318 Patent licensee Microchip Technologies, Inc. (“Microchip”). Case ‘126 Dkt. No. 98-2 p 19-20. On June 21, 2022, the Court extended the “outstanding fact discovery” deadline as to Continental to June 30, 2022 for the limited purpose of completing production of electronically stored information and allowing for certain depositions. Case ‘126 Dkt. No. 73 p 3 n 3 (“This deadline is solely with respect to previously-served fact discovery that remains outstanding and still needs to be completed concerning the Continental Defendants. No new fact discovery may be served or requested. Depositions previously noticed by any defendant in the 054 Action are within the definition of previously served fact discovery.”) The same order also extended the deadline to complete expert discovery from August 5, 2022 to August 8, 2022. *3 Following these additional limiting instructions, Continental served on June 28, 2022 supplemental interrogatory responses identifying as unmarked and practicing the ‘318 Patent the chip incorporated in DNMWR008 module produced by ‘318 Patent licensee Mitsubishi and the sixteen chips produced by ‘318 Patent licensee Microchip. Case ‘126 Dkt. No. 98-3 p 16-18. Arigna moves to strike the disclosures of the customer defendants served from June 1-3, 2022, Dkt. No. 68, and to strike the same of customer defendant GM and Continental served on June 17 and 28, 2022, Dkt. No. 98. For both, Arigna argues that the disclosures were untimely and prejudicial. Id. II. Law “Pursuant to 35 U.S.C. § 287(a), a patentee who makes or sells a patented article must mark his articles or notify infringers of his patent in order to recover damages.” Arctic Cat Inc. v. Bombardier Recreational Products Inc., 876 F.3d 1350, 1365 (Fed. Cir. 2017). Section 287(a) allows patentees or “persons making, offering for sale, or selling within the United States any patented article” to provide constructive notice by marking a patented article. See 35 U.S.C. § 287(a). The statute also states “In the event of a failure so to mark, no damages shall be recovered by the patentee ... except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.” Id. In Arctic Cat, the Federal Circuit established that “an alleged infringer who challenges the patentee's compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked ‘patented articles’ subject to § 287.” Arctic Cat, 876 F.3d at 1368. This burden of production is a “low bar” and “the alleged infringer need only put the patentee on notice that he or his authorized licensees sold specific unmarked products which the alleged infringer believes practice the patent.” Id. “Once the alleged infringer meets its burden of production, however, the patentee bears the burden to prove the products identified do not practice the patented invention.” Id. The burden of production is generally governed by Federal Rule of Civil Procedure 26, which obligates parties to supplement or correct disclosures and responses to interrogatories. Additionally, the discovery order between the parties requires disclosure of legal theories and factual bases of claims and defenses. Case ‘54 Dkt. No. 270 p 2. The same also requires “immediate” supplementation if a party knows a disclosure is incomplete or incorrect. Id. at p 9 (emphasis original). “If a [disclosing] party fails to provide information ... as required ... the party is not allowed to use that information or witness to supply evidence ... unless the failure was substantially justified or is harmless.” Fed. R. Civ. P. 37(c)(1). This evaluation requires courts to consider (1) the importance of the evidence, (2) the prejudice to the party opposing the introduction of the evidence, (3) the possibility of curing such prejudice by granting a continuance, and (4) any justification for why the disclosure should be considered timely. Primrose Operating Co. v. Natl. Am. Ins. Co., 382 F.3d 546, 564 (5th Cir. 2004). The burden rests on the disclosing party to prove harmlessness. III. Analysis *4 The defendants claim to have satisfied their burden of production under Arctic Cat and that the timeliness of the production does not prejudice Arigna. The defendants first rely on the letter sent by Toyota on August 9, 2021, as satisfying the Arctic Cat burden of production with respect to the accused chip incorporated upon the DNMWR008 module. Case ‘126 Dkt. Nos. 92 pp 7-11, 127 pp 6-10. The portion cited above merits revisiting on this issue. The Denso DNMWR008 millimeter wave radar uses a transceiver supplied by Mitsubishi. Denso has never used the NXP MR2001 chip for any product. Indeed, as you probably realize, the DNMWR008 designation is a FCC code, and if you check the publicly available FCC website, you can see a picture of this product which clearly shows a Mitsubishi transceiver and no sign of the MR2001 chip. We have attached a copy of this photo for your reference. It may be that someone on your team was misled by the fact that this picture shows a different NXP microprocessor, but that microprocessor is clearly marked with the Freescale/NXP product number SC667198MMM, and not MR2001. The SC667198MMM microprocessor serves as an interface between the analog output of the Mitsubishi transceiver and the digital LAN network in the vehicle. It does not contain a voltage controlled oscillator, and it is unrelated to the MR2001 chip or anything claimed in the ‘318 patent. We further understand that Mitsubishi has a license to use the ‘318 patent, and thus Arigna could not assert the ‘318 patent against a transceiver module manufactured by Mitsubishi. Dkt. Nos. 68-6, 98-6 (emphasis added). Since “an alleged infringer who challenges the patentee's compliance with § 287 bears an initial burden of production to articulate the products it believes are unmarked ‘patented articles’ subject to § 287,” Arctic Cat, 876 F.3d at 1368 (emphasis added), the Toyota letter does not articulate the requisite belief that the DNMWR008 module or the chip incorporated therein practices the ‘318 Patent. In fact, it articulates Toyota's belief as to the opposite: that neither the DNMWR008 module nor the chip incorporated therein practices the ‘318 Patent. This does not notify Arigna of any defendants’ intent to challenge the marking status of either the DNMWR008 module or the chip regarding adherence with § 287. The defendants weave in an argument that Patent Local Rule P.R. 2-3 imposes a duty similar to Federal Rule of Civil Procedure 11 to conduct a reasonable investigation of the facts and law, such that the complaint presumes that the DNMWR008 module infringes the ‘318 Patent. Dkt. No. 92 pp 5, 7; 127 p 7. However, that does not convert Toyota's letter into something else. Nor does Mitsubishi's status as licensee of the ‘318 patent and manufacturer of the chip incorporated into the DNMWR008 module. Dkt. No. 92 pp 7-11; Dkt. No. 127 pp 7-10. Whatever Arigna believed when it filed suit or believes now, and whatever obligations Mitsubishi may owe Arigna under contract, have no bearing on whether Toyota's letter notified Arigna of any defendant's intent to challenge compliance with § 287. Further, the defendants may not rely on the June 2022 Arctic Cat productions as timely because fact discovery was scheduled to close February 4, 2022, and subsequent docket control orders limited the scope of remaining fact discovery to that previously served and outstanding. Compare Case ‘54 Dkt. Nos. 405 & 408, with Case ‘126 Dkt. Nos. 32 p 4 n 4, Dkt. No. 73 p 3 n 3. Subsequent docket control orders specified, “No new fact discovery may be served or requested.” Id. Accordingly, defendants failed to timely satisfy the “low bar” set by Arctic Cat. *5 The case law relied upon by the defendants for lack of prejudice is distinguishable. In Lubby Holdings LLC v. Chung, 11 F.4th 1355, 1360 (Fed. Cir. 2021), the Federal Circuit found that the defendant satisfied its Arctic Cat burden of production the day before trial when it identified unmarked products after the plaintiff disclosed its damages under Rule 26(a) for the first time also the day before trial. Defendants also cite Packet Intel. LLC v. NetScout Sys., Inc., 2:16-cv-230, 2019 WL 2375218, at *4 (E.D. Tex. June 5, 2019) and Semcon IP Inc. v. Huawei Device USA Inc., 2:16-cv-437, 2017 WL 6343771, at *2–3 (E.D. Tex. Dec. 12, 2017), however the trial of the former predates the Federal Circuit decision in Arctic Cat and discovery was already closed in the latter when the Federal Circuit decision in Arctic Cat issued. Under the presumption that the discourse was timely, defendants claim Arigna's arguments would impose an unknown deadline to satisfy Arctic Cat, Case ‘126 Dkt. No. 127 p 11, but the discovery order in place between the parties mandates “immediate” supplements when a party knows a disclosure is incomplete or incorrect, Case ‘54 Dkt. No. 270 p 9 (emphasis original). On August 9, 2021, the same day Toyota notified Arigna as to its belief that the inclusion of the DNMWR008 module was a mistake, Arigna served an interrogatory on each defendant to identify “all factual and legal bases for each affirmative defense [they] inten[d] to assert that would deny in whole or in part Plaintiff's right of recovery in this action.” Compare Case ‘126 Dkt. Nos. 68-6, 98-6; with 68-4 pp 10-11 (Common Interrogatory No. 4, answer and supplements), 98-3 pp 13-18 (Common Interrogatory No. 4, answer and supplements). The defendants cannot claim that the Toyota letter sent in August 2021 satisfies Arctic Cat and at the same time satisfied their mandate to supplement disclosures immediately in June 2022. Apart from the Toyota letter already set aside, the only justification the defendants provide is that Arigna was not prejudiced because it obtained a third party consultant to reverse engineer the DNMWR008 module and that Mitsubishi, as a licensee of the ‘318 Patent from Arigna, is under obligations to disclose technical information. However, because this is not a case where all information about the alleged unmarked products is within the possession of Arigna, defendants are unable to convincingly argue a lack of prejudice resulting from the June Arctic Cat production when fact discovery closed in February. Cf. Ultravision Techs., LLC v. GoVision LLC, No. 2:18-cv-0100, 2021 WL 2213956, at *3 (E.D. Tex. May 24, 2021), Report and Recommendation adopted, 2021 WL 2212227 (E.D. Tex. June 1, 2021) (finding the accused infringer failed to meet its burden under Arctic Cat for purposes of summary judgment but declining patentee's prayer to preclude the accused infringer from challenging compliance with § 287 at trial because information about the identified unmarked products was in the possession of the patentee thereby minimizing prejudice). This determination does not change even if the Court found, which it does not, that the deadline for general fact discovery was set June 17, 2020, as to customer defendants and June 30, 2022, as to Continental. By waiting until months after, or alternatively even upon the eve of, the deadline for fact discovery to serve its Arctic Cat production, defendants significantly hindered Arigna's ability to develop evidence from third parties Mitsubishi and Microchip. Defendant's argument that Arigna possesses third party consultant reverse engineering reports on the DNMWR008 module has no bearing on Arigna's ability to obtain technical specifications from Mitsubishi with respect to the same. Nor does general contractual language obligating Mitsubishi to disclose information about the patent necessarily obligate Mitsubishi to disclose technical specifications about the DNMWR008 module. *6 Accordingly, the motions to strike (Dkt. Nos. 68 and 98) are GRANTED. Footnotes [1] Continental AG, Conti Temic Microelectronic GmbH, and ADC Automotive Distance Control Systems GmbH (collectively, “Continental”). [2] Including Nissan Motor Co., Ltd. and Nissan North America, Inc. (collectively “Nissan”); Tesla, Inc. and Tesla Motors TX, Inc. (collectively “Tesla”); Toyota Motor Corporation and Toyota Motor North America, Inc. (collectively “Toyota”); and General Motors LLC (“GM”). [3] For procedural reasons not relevant here, Case No. 2:22-CV-00126 (“Case ‘126”) was born by severance of the instant defendants from Case No. 2:21-CV-00054 (“Case ‘54”). Compare Case ‘54 Dkt. No. 467 with Case ‘126 Dkt. 1.