United States District Court, D. Connecticut
RMH TECH LLC, a Colorado limited liability company, and METAL ROOF INNOVATIONS, LTD., a Colorado corporation, Plaintiffs,
PMC INDUSTRIES, INC., a Connecticut corporation, Defendant.
RULING AND ORDER ON MOTIONS IN LIMINE
A. BOLDEN, UNITED STATES DISTRICT JUDGE.
Tech LLC and Metal Roof Innovations, Ltd.
(“Plaintiffs” or “RMH and MRI”) have
sued PMC Industries, Inc. (“Defendant” or
“PMC”), alleging patent infringement. PMC asserts
two counterclaims seeking a declaratory judgment of
non-infringement or invalidity. Before the bench trial
beginning on October 29, 2018, both sides have filed motions
MRI move in limine for the Court to sequester all
fact witnesses during the trial, under Federal Rule of
Evidence 615. Pls.' Motion in Limine to
Sequester Witnesses, dated Sept. 14, 2018 (“Pls.'
Mot.”), ECF No. 163.
moves in limine to exclude any reference to U.S.
Patent No. U.S. 9, 850, 661 to Kovacs (the “Kovacs
Patent”) at trial for the purposes of establishing
infringement or non-infringement. Memorandum in Support of
Def.'s Motion in Limine to Preclude Any Reference to the
Kovacs Patent to Establish Infringement or Non-Infringement,
dated Sept. 14, 2018 (“Kovacs Mot.”), ECF No.
also moves in limine to preclude RMH and MRI from
presenting evidence or arguments related to the doctrine of
equivalents (“DOE”) at trial. Memorandum in
Support of Def.'s Motion in Limine to Preclude
Evidence of and Argument Regarding Infringement under the
Doctrine of Equivalents at Trial, dated Sept. 14, 2018
(“DOE Mot.”), ECF No. 161-1.
PMC moves in limine to preclude RMH and MRI from
presenting evidence or arguments as to the issue of willful
infringement at trial. Memorandum in Support of Def.'s
Motion in Limine to Preclude Evidence of and
Argument Regarding Willful Infringement at Trial, dated Sept.
14, 2018 (“Willfulness Mot.”), ECF No. 159-1.
following reasons, Plaintiffs' motion in limine
is GRANTED and PMC's motions in
limine regarding the Kovacs Patent and Willful
Infringement are DENIED. PMC's motion to
preclude evidence related to the doctrine of equivalents is
DENIED, but the Court may ultimately exclude
any opinions offered at trial by Mr. Haddock that were not
sufficiently disclosed to PMC, as detailed below.
FACTUAL AND PROCEDURAL BACKGROUND
Colorado limited liability company, has its principal place
of business in Colorado Springs, Colorado. Joint Trial
Memorandum, dated Sept. 14, 2018 (“Joint Trial
Mem.”), ECF No. 162, ¶ 5(A)(a). MRI is a Colorado
corporation with its principal place of business in Colorado
Springs, Colorado. Id. ¶ 5(A)(c). PMC is a
Connecticut corporation with its principal place of business
in Plainville, Connecticut. Id. ¶ 5(A)(d).
and Defendant produce mounting adapter devices for metal
roofs that operate by securing cross members, thereby
allowing easier installation and removal of snow retention
systems. RMH and MRI claim that PMC's device, the COLOR
Snap system, infringes Claims 15 and 16 of its patent, U.S.
Patent No. 6, 470, 629 (the “‘629 Patent”).
Id. ¶ 4(A). The ‘629 Patent is entitled
“Mounting System and Adaptor Clip” and was issued
to Robert M. Haddock on October 29, 2002; Haddock then
assigned the patent to RMH. Id. ¶¶
5(A)(e), 5(A)(b). MRI is the exclusive licensee of the
‘629 Patent. Id. ¶ 5(A)(c). RMH and MRI
expect to demonstrate, through trial testimony, that their
ColorGard product is based on the ‘629 Patent.
Id. ¶ 9(A). PMC offers and sells the Color SNAP
System within the United States. Id. ¶ 5(A)(q).
MRI allege that the manufacture and sale of the Color SNAP
system directly infringes on claims 15 and 16 of the
‘629 Patent. Id. ¶ 6(A). Defendant argues
that the Color SNAP system does not literally infringe those
claims because it does not contain at least four required
elements pursuant to the claim constructions adopted by the
Court. Id. ¶ 7.
11, 2016, RMH and MRI sued PMC in the United States District
Court for the District of Colorado, alleging that Defendant
is infringing on the design and novel function of the
‘629 Patent through the marketing and sale of the COLOR
Snap system, and seeking both monetary damages as well as an
injunction. See Complaint, dated July 11, 2016
(“Compl.”), ECF No. 1.
September 7, 2016, PMC answered and brought counterclaims
against RMH and MRI, seeking a declaratory judgment of
non-infringement and of the ‘629 Patent's
invalidity. Answer and Counterclaim, dated Sept. 7, 2016, ECF
No. 17; see also Amended Answer, dated Feb. 10,
2017, ECF No. 43.
11, 2017, the Honorable Christine Arguello, United States
District Judge for the District of Colorado held a hearing
consistent with Markman v. Westview Instruments,
Inc., 517 U.S. 370 (1996) (“Markman
hearing”) to determine the construction of the patent
claims in question. Minute Entry, dated May 11, 2017, ECF No.
October 2, 2017, the Court issued an order constructing the
disputed claims of the Haddock Patent. ECF No. 66. The Court
subsequently denied PMC's motion for reconsideration of
the claim construction order. Order Denying Defendant's
Motion for Partial Reconsideration of Order on Claim
Construction, dated Jan. 8, 2018, ECF No. 74.
December 6, 2017, PMC moved to stay the case for ninety days
pending settlement discussions, a motion RMH and MRI opposed
and that the Court ultimately denied. See Motion to
Stay, dated Dec. 6, 2017, ECF No. 78; Brief in Opposition to
Motion to Stay, dated Dec. 27, 2017, ECF No. 82; Order
Denying Motion to Stay, dated Jan. 10, 2018, ECF No. 87.
January 8, 2018, PMC moved to dismiss for improper venue or,
in the alternative, for the case to be transferred to this
Court, on the basis that venue in a patent action, pursuant
to 28 U.S.C. § 1400(b), properly lies in those
jurisdictions in which the defendant resides or has a regular
and established place of business. Motion to Dismiss for
Improper Venue or, in the Alternative, to Transfer Venue,
dated Jan. 8, 2018, ECF No. 86. On March 30, 2018, the Court
granted the motion to transfer venue. Order Granting
Defendant's Motion to Transfer Venue, dated Mar. 30,
2018, ECF No. 95. That same day, the case was transferred to
the District of Connecticut. See Docket Entry, dated
Mar. 30, 2018, ECF No. 96. The case was assigned to this
Court on April 16, 2018. See Order of Transfer,
dated Apr. 16, 2018, ECF No. 110.
14, 2018, the Court held a telephonic status conference with
the parties and set a schedule for proceeding to a bench
trial. Minute Entry, dated May 14, 2018, ECF No. 130. The
schedule was modified on May 22, ...