Juducial Estoppel Bars New Infringement Theory

Posted on | January 14, 2010 | 2 Comments

2010-1118 Altair v. LEDdynamics
ED/MI 07-cv-13150
Judge George Caram Steeh

Plaintiff Altair appeals from the grant of summary judgment by Judge Steeh finding that LEDdynamics LED fluorescent tube replacement bulb did not infringe certain asserted claims of 7,049,761.  While the result appears fairly easy based on the court's claim construction, Altair developed a new infringement theory during summary judgment briefing that the court refused to consider under the doctrine of judicial estoppel.

The relevant claims of the '761 patent required LED's "closely spaced," which the court construed as "not spaced apart, such that adjacent LEDs are sufficiently close together that another LED cannot fit in the space therebetween."  Order, p.1.  This was the construction proposed by LEDdynamics.

The accused device was a 48" light tube containing 36 LEDs, each about 0.25" wide and spaced about 1.25" apart.  Apparently both sides accepted this approach to the LEDs and accused product.  Because one could clearly have placed another 0.25" LED in the 1.25" space, the accused light tube clearly did not infringe.

However, Altair sought to argue that each 0.25" LED was actually composed of 6 LEDs in a tight 2×3 arrangement such that no additional LEDs could fit in between the 6.  Noting that Altair knew (or should have known) about this earlier, the court refused to consider that argument on the basis of judicial estoppel:

Altair’s only argument in response to LEDdynamics’ motion for summary
judgment is that it should be allowed to change the definition of LEDdynamics’ LEDs at this late juncture in the litigation. Altair is estopped from doing so. Transclean Corp. v. Jiffy Lube Int’l, Inc., 474 F.3d 1298, 1307 (Fed. Cir. 2007) (citing New Hampshire v. Maine, 532 U.S. 742, 750 (2001)).

Judicial estoppel prevents a party from taking inconsistent positions in the same or related litigation to protect the integrity of the court. Id. (citing Hossaini v. West Mo. Med. Ctr., 140 F.3d 1140, 1142-43 (8th Cir. 1998)). The Supreme Court has set forth several non-exclusive factors for courts to consider in deciding whether the doctrine of judicial estoppel applies. Id. (citing New Hampshire v. Maine, 532 U.S. at 750-51).  Those factors include:

“(1) the parties later position must be ‘clearly inconsistent’ with its earlier position,

(2) the party must have succeeded in persuading a court to adopt its earlier position, thereby posing a ‘risk of inconsistent court determinations’; and

(3) ‘the party seeking to assert an inconsistent position would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.’” Id.

Each of these factors militate in favor of applying the doctrine of estoppel here to preclude Altair from altering its definition of LED in the accused product now from that which it used during the entire Markman proceeding.

Order, p. 5 [formatting changed for ease of reading].

The court found that Altair had original argued that the accused product contained only 36 LEDs (not 216), and the court says that it adopted Altair's definition of LEDs, Order, p. 6, although it doesn't say what is that definition. 

As to the third factor the court found it would be unfair to allow Altair to change arguments now, because it would require new claim construction and waste the court's time and prejudice LEDdynamics.  The court pointed out that it did the original claim construction "based on its understanding of the accused device."  Order, p. 7.

Lastly, the court denied Altair's request to amend its infringement contentions to include different claims from the '761 patent.  After discussing whether the standard is Fed. R. Civ. P. 15 (leave freely given) or 16 (good case)–it is the latter–the court found no good cause to allow the amendment at such a late date.

2010-1118 Order re SJ

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