United States District Court, N.D. New York
RANDOLPH F. TREECE, Magistrate Judge.
Presently before this Court is Defendants' Letter-Motion asking this Court to address Vaughan Company's (hereinafter "Vaughan") purportedly insufficient patent infringement contentions under this District's Local Patent Rules. Dkt. No. 80, Defs.' Lt.-Br., dated May 30, 2014. Vaughan vigorously disputes that its infringement contentions are insufficient. Dkt. No. 81, Pl.'s Lt.-Br., dated May 30, 2014. Both parties allude to the Memorandum-Decision and Order, dated October 23, 2013, issued by the Honorable David N. Hurd, United State District Judge, presaging what may constitute an accused instrumentality in this case and, consequently, having a significant bearing on the nature and extent of the infringement contentions. Dkt. No. 62.
I. CASE HISTORY
To appreciate this discovery issue, a case history is necessary.
On August 16, 2012, Vaughan filed a Complaint against GBFT alleging nine causes of action. Dkt. No. 1, Compl. For our purposes, the Court refers to only the patent infringement causes of action and to the Rensselaer Project event. Id. at Counts I-IV. The parties are competitors in the design and manufacture of pump mixing systems, products, and services. Id. at ¶ 9. Vaughan is a nationally-recognized designer and manufacturer of chopper pumps used in the fields of commercial and municipal wastewater treatment, and one of its better known systems is the ROTAMIX® product. Id. at ¶¶ 18 & 21.
On August 20, 2012 - six days prior to the filing of this Complaint - Vaughan became aware of GBFT's bid to design a digester mixing system project for Rensselaer County, New York (hereinafter the "Rensselaer Project"). It is alleged that the Rensselaer Project, under section 2.03 of the bid specification,  calls for a backplate, a cutter bar plate, a cutter nut, and an upper cutter, which would encompasses Vaughan's 017, 482, 483, and 550 United States Patents. Id. at ¶¶ 41-53. Based upon the bid process, it is alleged that GBFT infringed these patents by "offering for sale" Vaughan's product and services. Id. at ¶¶ 78-93; see also Dkt. No. 62 at p. 5.
Contrariwise, GBFT contends that during July 2012, it submitted a price estimate for portions of a bio-fuels mixing system for the Rensselaer Project. That price estimate included an estimate for equipment that would work with a Hayward Gordon "Chop-X" pump, but does not imply that it was offering for sale any other type of chopper pump nor mentions any modification to the Chop-X pump. Further, GBFT argues that neither the price estimate for the Rensselaer Project nor the Chop-X pump infringe Vaughan's patents. Dkt. No. 63, Second Am. Answer, dated Oct. 29, 2013, at Fourth Defense, ¶¶ 133-142, & Third Counterclaim, ¶¶ 81, 85-90. Recognizing, however, that Vaughan is asserting that its price estimate for the Rensselaer Project "literally" infringes Vaughan's patents, Dkt. No. 63, Second Am. Answer, (First Counterclaims), at ¶¶ 44-49, 57-59, GBFT contends that even though Vaughan has not brought a patent infringement action directly against the Chop-X pump, Vaughan, by virtue of this lawsuit, is indeed alleging that the Chop-X pump literally infringes its patents. Id. at Second Counterclaim, ¶¶ 76.
B. Previous Dispositive Motions
Judge Hurd addressed two Motions to Dismiss. Initially, GBFT moved to dismiss Vaughan's Complaint. Dkt. No. 17, Defs.' Mot. to Dismiss, dated Oct. 5, 2012. Speaking directly to Vaughan's four patent infringement causes of action, Judge Hurd found that the factual allegations within the Complaint complied with the requisite pleading standards and accordingly denied GBFT's Motion. Dkt. No. 22, Mem.-Dec. & Order, dated Nov. 15, 2012, at pp. 5-7. Judge Hurd noted that
Plaintiff specifically alleges that defendants infringed on four of its patents by submitting a bid for a mixing system project in Rensselaer County in August 2012. The request for proposal required the bidder to use specific equipment and components patented by Vaughan, or its equivalent. A bid to supply a product specified in a request for proposal is an "offer to sell." FieldTurf Int'l, Inc. v. Sprinturf, Inc., 433 F.3d 1366, 1369-70 (Fed. Cir. 2006). An "offer to sell" a patent product is a ground for an infringement claim. 35 U.S.C. § 271(a).
Id. at p. 5.
Understanding that GBFT is maintaining that the Chop-X pump was "equal" to Vaughan's patented equipment, Judge Hurd observed that "it is unclear whether [GBFT's price estimate] is the entire bid or if the Chop-X pump incorporates any of the components for which Vaughan holds a patent... [and thus] it is premature to determine... that defendants did not offer to sell the exact pump equipment and components that are subject to Vaughan's patents." Id. at p. 6 (citation omitted).
In the second round of dispositive motions, Vaughan challenged, by a Motion to Dismiss, Counterclaims in GBFT's Seconded Amended Answer. Dkt. No. 25, Second Am. Answer; Dkt. No. 34, Pl.'s Mot. to Dismiss, dated Jan. 31, 2013. In addition to opposing Vaughan's Motion, GBFT filed a Cross-Motion seeking to dismiss Vaughan's claims again. Dkt. No. 39, Defs.' Mot. to Dismiss, dated Feb. 19, 2013. Presently both parties cohere to Judge Hurd's second Memorandum-Decision and Order relative to the scope of Vaughan's patent infringement claims and attribute preeminence, albeit competing, to the Rulings therein in support of their respective positions on the adequacy of Vaughan's patent ...