Case Cite

Flexiteek Americas, Inc. v. Plasteak, Inc., No. 12-60215-CIV-Seitz/Simonton, slip op. (S.D. Fla. June 14, 2013).

IPDQ Commentary

The Flexiteek court allowed discovery based on Plaintiffs’ lost profits and reasonable royalty damages theories. Specifically, Plaintiffs were allowed discovery on Defendants’ pre-reissue products, notwithstanding the doctrine of intervening rights. Defendants, therefore, were allowed to conduct discovery on Plaintiffs’ products.

Case Summary

Plaintiffs sued for infringement. Id. at 1. Defendants answered and, in part, asserted Plaintiffs were barred from recovering damages prior to December 2011 pursuant to Defendants’ intervening rights under §§307 and §§252. Id. at 2.

When Defendants objected to damages discovery based on their intervening rights, Plaintiffs moved to compel. Similarly, Defendants sought to compel discovery regarding Plaintiffs’ products.

Intervening Rights

The court concluded neither the doctrine of absolute intervening rights or equitable intervening rights prevented Plaintiffs from obtaining discovery about Defendants’ products prior to the date of reissue. Thus, the court overruled Defendants’ general objections to the discovery. Id. at 5, 9. The court analyzed the issue as follows:

  • Whether any of the claims from the original patent survived the reexamination is irrelevant. Under the § 252, Plaintiffs would still be permitted to challenge the doctrines of absolute and equitable intervening rights to Defendants’ products made, used or sold at the time of reissue. Id. at 6-7. Such challenges made the discovery appropriate.
  • Defendants filed to explain why the potential application of the doctrine of intervening rights would preclude Plaintiffs from challenging the application of the doctrine in the case. Id. at 8.
  • In addition, Defendants’ request that the court make a determination on the application of intervening rights in this case was premature. That determination can only be made once the patent holder secures a liability judgment for infringement. Id. at 8.

Discovery Regarding Plaintiffs’ Products

Plaintiffs objected to discovery regarding their sales, products and manufacturing and installation processes. Id. at 9. The court concluded that, in light of damages sought by Plaintiffs (reasonable royalty and/or lost profits) and defenses raised by Defendants, the discovery was appropriate and would be allowed. Id. at 11. The court reasoned:

  • Much of the information was relevant to determining the presence of the Panduit factors. Id. at 12. The evidence could be generally relevant to “but for“ causation, specifically the presence of acceptable, non-infringing alternatives. Id. at 12-13.
  • The discovery sought was also relevant to a determination of a reasonable royalty using Georgia-Pacific factors 9 (advantages of patent over old devices), 10 (nature of commercial embodiments of patent), and 13 (apportionment of profit to patent). Id. at 13 – 14.

The court also discussed the doctrine of equivalents, the temporal scope of the discovery requests, and the absence of hardships as bases for the discovery. Id. at 14-16.