1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ELY HOLDINGS LIMITED, et al., Case No. 18-cv-06721-JCS

8 Plaintiffs,

ORDER DENYING LEAVE TO FILE

9 v. MOTION FOR RECONSIDERATION

10 O’KEEFFE’S, INC., Re: Dkt. No. 220 Defendant. 11

12 I. INTRODUCTION 13 The Court previously granted summary judgment in favor of Defendant O’Keeffe’s, Inc., 14 d/b/a SaftiFirst (“Safti”) on Plaintiffs’ claims of patent infringement, in large part based on 15 Plaintiffs’ failure to show that Safti’s accused product contained a layer of “fire rated glass” as 16 claimed in the patent at issue. See Order re Mots. for Summ. J. & Mots. to Exclude Expert 17 Testimony (“MSJ Order,” dkt. 214) at 21–27.1 Plaintiffs now argue that the Court erred in 18 requiring Plaintiffs to show that the layer at issue, as opposed to an assembled flooring product as 19 a whole, had received a fire rating. The motion is suitable for resolution without further briefing 20 or argument. See Civ. L.R. 7-9(d). For the reasons discussed below, Plaintiffs’ motion for leave 21 to file is DENIED.2 22 This order assumes the parties’ familiarity with the case and thus does not address in detail 23 the procedural history, the patent in dispute, or the nature of the products at issue, all of which are 24 explained in the Court’s previous order on summary judgment. 25

26 1 Ely Holdings Ltd. v. O’Keeffe’s, Inc., No. 18-cv-06721-JCS, 2021 WL 390946 (N.D. Cal. Feb. 3, 2021). Citations herein to the Court’s previous orders refer to page numbers of the versions filed 27 in the Court’s ECF docket. 1 II. ANALYSIS 2 A. Legal Standard for Reconsideration 3 This Court’s local rules require that a party seeking leave to move for reconsideration of an 4 interlocutory order “must specifically show reasonable diligence in bringing the motion, and one 5 of the following:”

6 (1) That at the time of the motion for leave, a material difference in fact or law exists from that which was presented to the Court before 7 entry of the interlocutory order for which reconsideration is sought. The party also must show that in the exercise of reasonable diligence 8 the party applying for reconsideration did not know such fact or law at the time of the interlocutory order; or 9 (2) The emergence of new material facts or a change of law 10 occurring after the time of such order; or

11 (3) A manifest failure by the Court to consider material facts or dispositive legal arguments which were presented to the Court 12 before such interlocutory order. 13 Civ. L.R. 7-9(b). “Unless otherwise ordered by the assigned Judge, no response need be filed and 14 no hearing will be held concerning a motion for leave to file a motion to reconsider.” Civ. L.R. 15 7-9(d). 16 Plaintiffs rest their present motion solely on the third basis for reconsideration, manifest 17 failure to consider facts or arguments presented before the Court issued its order. 18 B. Plaintiffs Have Not Specifically Shown Diligence 19 As a starting point, Plaintiffs have waited nearly two months to seek reconsideration after 20 the Court issued its order on February 3, 2021. Plaintiffs have not explained how such delay is 21 consistent with the requirement that they “specifically show reasonable diligence in bringing the 22 motion”—a requirement omitted from the discussion of Local Rule 7-9(b) in their motion. See id.; 23 Mot. for Leave (dkt. 220) at 2.3 The motion is DENIED for failure to meet that requirement. 24 C. Plaintiffs’ Arguments Were Not Presented on Summary Judgment 25 Even if Plaintiffs had shown diligence, the Court would deny the motion on its merits, 26

27 3 The Court uses the page numbers assigned by the ECF filing system in citations to Plaintiffs’ 1 because the arguments and evidence on which Plaintiffs now rely could have been presented 2 before the Court issued its previous order, but were not. Plaintiffs therefore have not shown a 3 “manifest failure by the Court to consider material facts or dispositive legal arguments which were 4 presented to the Court before such interlocutory order,” as required by the only subpart of Local 5 Rule 7-9(b) on which Plaintiffs rely. See Mot. for Leave at 2 (emphasis added). First, Plaintiffs 6 argue that the Court improperly construed the patent as requiring that a layer of “fire rated glass” 7 receive a rating separately from the fully assembled flooring unit, a requirement Plaintiffs contend 8 was not included in the Court’s decision on claim construction. Id. at 3–5. Second, even using the 9 claim construction applied in the Court’s summary judgment order, Plaintiffs argue that the Court 10 disregarded evidence that the accused product infringed under the doctrine of equivalents. Id. at 11 6–7. 12 1. Whether the Fire Rated Glass Must Be Separately Rated 13 The Court’s order on claim construction addressed the relevant issue regarding the term 14 “fire rated glass” as follows:

15 Plaintiffs object to Safti’s proposed requirement that fire-rated glass must be “rated as fire resistant by a national recognized rating entity,” 16 arguing that there is no intrinsic or extrinsic evidence to support such a requirement, or even to show that such an entity exists. Pls.’ Br. at 17 16. Safti responds that “[t]o be a fire rated glass, the product has to be tested and certified, and installed as tested and certified; otherwise the 18 word ‘rated’ has no meaning.” Def.’s Br. at 20. Plaintiffs do not address this issue in their reply. See Pls.’ Reply at 10–11. Safti is 19 correct that its construction largely applies a natural meaning of the word “rated,” although Safti has offered no evidence to support the 20 conclusion that a person skilled in the art would understand “fire rated glass” as requiring certification by “a nationally recognized rating 21 entity” (as opposed to some other entity). Dr. Stevick opines only that the term “fire rated glass” denotes that the glass “has been rated as 22 possessing a designated fire resistance certified by a testing authority.” See Stevick Opening Report ¶ 34. Plaintiffs’ expert Tim 23 MacFarlane does not address whether fire-rated glass must be tested. See MacFarlane Opening Report ¶¶ 120–27; MacFarlane Reply 24 Report ¶¶ 32–33. The Court adopts Dr. Stevick’s view of this issue, which differs only slightly from Safti’s proposed construction, as 25 uncontradicted expert opinion evidence. 26 Claim Construction Order (dkt. 112) at 14.4 The Court therefore construed the term “fire rated 27 1 glass” as meaning:

2 a multi-layered glass sheet meeting all of the following conditions:

3 a. made up of two or more layers of glass;

4 b. having a transparent intumescent material interspaced between at least two of the glass layers; 5 c. having glass as its outer layers; and 6 d. rated as possessing a designated fire resistance certified 7 by a testing authority. 8 Further Order re Claim Construction (dkt. 142) at 4 (emphasis added).5 9 Plaintiffs assert that “neither party understood the Court’s construction of ‘a layer of fire 10 rated glass’ to include the requirement that it be certified ‘separately by itself’ rather than 11 in the configuration in which it was intended to be used.” Mot. for Leave at 4. That assertion is 12 not reflected in either party’s briefs on summary judgment. 13 Plaintiffs’ motion addressed this requirement only in one sentence, and asserted that 14 because a testing authority had “certified the fire resistant portion of the Accused Products alone 15 as providing a certain fire resistance,” “the fire resistant portion of the Accused Products is also ‘d. 16 rated as possessing a designated fire resistance certified by a testing authority.’” Pls.’ MSJ (dkt. 17 187) at 5 (emphasis added). Their brief in opposition to Safti’s motion acknowledged Safti’s 18 argument that “‘the GPX[] 120 fire rating applies to the entire floor, and no sub-part of it satisfies 19 the Court’s definition of a fire-rated floor.’” Pls.’ Opp’n to MSJ (dkt. 192) at 1 (quoting Def.’s 20 MSJ (dkt. 189) at 19). Plaintiffs argued in response that the incorporation of another product with 21 a separate fire rating—SuperLite II-XLB—established that the accused GPX 120 flooring product 22 infringed the claim specifying a lower layer of “fire rated glass.” Id. at 5–6. And again in their 23 reply brief on their own motion, Plaintiffs cited only a SuperLite II-XLB fact sheet for their 24 assertion that the lower portion of Safti’s GPX 120 product “has been certified as fire resistant by 25 Intertek,” not any evidence pertaining to the fire rating for the GPX 120 product itself. Pls.’ MSJ 26 5 Ely Holdings Ltd. v. O’Keeffe’s, Inc., No. 18-cv-06721-JCS, 2020 WL 511799, at *2 (N.D. Cal. 27 Jan. 31, 2020). Construction of this term required further briefing and a second order due to a 1 Reply (dkt. 207) at 4. 2 Safti never disputed that the product as a whole held a fire rating, but argued that the lower 3 portion was not separately fire rated, and that it did not consist of SuperLite II-XLB. Def.’s MSJ 4 at 16–17 (“Notably, the GPX 120 has no 120-minute fire rating except as a unit.”); Def.’s Opp’n 5 to MSJ (dkt. 201) at 2 (“The floor has no fire rating without the top layer . . . .”); id. at 8 (“[A] 6 GPX 120 does not fall within term (ii) (d) of this court’s [claim construction order] if one removes 7 25% of the products’ major fire retardant, or the top glass sheet to which that layer of intumescent 8 material adheres.”); Def.’s MSJ Reply (dkt. 208) at 5–6 (“Mr. Macfarlane agrees that if any of the 9 nine layers of the GPX 120 were removed, it would no longer have its 120-minute rating. . . . 10 Thus, under term (ii)(d) of the Further Claim Construction Order, each of those layers must be part 11 of the [fire rated glass].”). Had Plaintiffs intended to argue that the fire rating for the unit as whole 12 satisfied this claim term, they could have relied on the undisputed evidence that the GPX 120 13 product was fire rated—as acknowledged in each of Safti’s briefs—rather that consistently citing 14 the fire rating for the separate SuperLite II-XLB product that, according to Plaintiffs, made up its 15 lower layers.6 16 Plaintiffs’ unauthorized proposed supplemental brief, submitted after the hearing, still 17 argued primarily that the GPX 120 product infringed the “fire rated floor” claim based on its 18 purported incorporation of SuperLite II-XLB. Pls.’ Prop’d Supp’l Br. (dkt. 213-2) at 2–3. 19 Plaintiffs also cited a wide range of evidence, some of which showed a fire rating for the GPX-120 20 unit as a whole, but did not articulate an argument that a rating for the unit as a whole would meet 21 the claim requirement. See id. at 3–6. 22 The Court denied Plaintiffs leave to file that supplemental brief, concluding that Plaintiffs 23 “offered no explanation for their failure to raise the evidence they now cite in the briefing and 24 argument already allowed,” and that even if considered, nothing in the supplemental brief would 25 6 Plaintiffs also do not claim to have raised this argument at the hearing, and the Court does not 26 recall them doing so, even after the Court shared its tentative position that Plaintiffs had not shown infringement of the “fire rated glass” claim because the evidence did not show that the lower 27 portion of the GPX 120 product consisted of SuperLite II-XLB. No transcript of that hearing is 1 alter the Court’s conclusion. MSJ Order at 32. The Court granted summary judgment for Safti on 2 Plaintiffs’ infringement claims because no evidence supported Plaintiffs’ position that the lower 3 portion of GPX 120 was in fact SuperLite II-XLB, and Plaintiffs offered no other reason to believe 4 that the lower portion of GPX 120 was separately fire rated. Id. 26. 5 Plaintiffs argue for the first time in their present motion that Safti “did not supplement its 6 responses to Plaintiffs’ interrogatories regarding infringement to add such an argument,” i.e., that 7 its product did not infringe because the layer of “fire rated glass” did not have its own fire rating. 8 Mot. for Leave at 5. Plaintiffs cite no evidence for this assertion, see id., and despite expressly 9 acknowledging Safti’s argument that it was entitled to summary judgment because the “fire rating 10 applies to the entire floor, and no sub-part of it satisfies the Court’s definition of a fire-rated 11 floor,” Pls.’ Opp’n to MSJ at 1, Plaintiffs never contended that Safti’s interrogatory responses 12 foreclosed such an argument before the Court granted summary judgment. 13 Plaintiffs also now also argue that the Court’s construction “improperly excludes two 14 preferred embodiments of the invention,” depicted as figures 5 and 6 of the patent at issue. Mot. 15 for Leave at 3–5 (emphasis omitted). According to Plaintiffs, “[t]here is no way for the layer of 16 fire-rated glass in either of these embodiments to be tested and rated separately by itself because it 17 is necessarily joined to the layer of structural glass.” Id. at 4. This argument is frivolous, and 18 wholly incompatible with the arguments Plaintiffs actually presented on summary judgment, 19 where Plaintiffs claimed that Safti’s product—in which the fire resistant glass is similarly “joined 20 to the layer of structural glass” above it—used another product that had separately received a fire 21 rating as its “fire rated glass” layer, as discussed above. Pls.’ Opp’n to MSJ at 5–6; Pls.’ MSJ 22 Reply (dkt. 207) at 4. The defect in that previous argument was not that it would be impossible to 23 join the separately-rated SuperLite II-XLB product to additional structural layers (and add other 24 components) to create an infringing product, but instead that Plaintiffs presented no evidence Safti 25 in fact did so, as opposed to using different materials that had not received a separate fire rating as 26 the lower layer of its accused product. See MSJ Order at 26. Plaintiffs have not explained why 27 the embodiments depicted in figures 5 and 6 could not use an existing fire rated product (like 1 The Court’s claim construction comports with the plain language of the patent. A “layer of 2 glass which comprises a fire rated glass” reasonably means a layer of material that has itself 3 received a fire rating. Plaintiffs have never identified evidence that a person of ordinary skill in 4 the art would understand that claim differently—whether at claim construction, at summary 5 judgment, in their unauthorized supplemental brief, or in their present motion for leave to file for 6 reconsideration. To the extent the claim might be amenable to the interpretation Plaintiffs now 7 propose, they had ample opportunity to argue as much before the Court granted summary 8 judgment, but never did so. 9 Having failed to identify “material facts or dispositive legal arguments which were 10 presented to the Court before [the] interlocutory order” at issue, Plaintiffs cannot meet their 11 burden to show a “manifest failure by the Court to consider” any such facts or arguments in 12 concluding that the accused product did not literally infringe Plaintiff’s patent. See Civ. L.R. 13 7-9(b) (emphasis added). 14 2. Whether the Doctrine of Equivalents Applies 15 Plaintiffs also argue that the Court erred in concluding that they had not shown 16 infringement under the doctrine of equivalents, because their expert Tim MacFarlane stated in his 17 reply report that the lower portion of Safti’s product served the same function as the “fire rated 18 glass” layer in the patent claims, and Plaintiffs’ motion for summary judgment cited that portion 19 of MacFarlane’s report. Mot. for Leave at 6–7. 20 The portion of Plaintiffs motion for summary judgment addressing the doctrine of 21 equivalents focuses on the question of how load transfers within the product, not any question of 22 fire rating or resistance. Pls.’ MSJ at 15–17. Following a detailed discussion of that separate 23 issue, Plaintiffs assert briefly that the doctrine of equivalents applies to all of the limitations of the 24 claims at issue:

25 Moreover, in evaluating whether a component in an accused product is equivalent to the element of a patent claim, relevant differences can 26 include the function each serves, the way in which each works, and the result each obtains. See Warner-Jenkinson, 520 U.S. at 39. Here, 27 as set forth in Macfarlane’s Reply Expert Report, the structural way, to achieve exactly the same result as the structural glass layer, 1 the fire-rated glass layer, and the structural frame of the claimed invention. 2 3 Id. at 17. Plaintiffs’ motion did not cite any particular portion of the report addressing the 4 question of equivalence to “fire rated glass.” 5 Plaintiffs’ opposition brief addressed the doctrine of equivalents only with respect to 6 transfer of load, not with respect to fire rating. Pls.’ Opp’n to MSJ at 14–16. They addressed the 7 issue only in their response to what they characterized as Safti’s “reason (7)” for summary 8 judgment: that “‘some load from the walking surface transfers from the walking surface to the fire 9 floor, and all of the load does not go directly from the load transferring means to the structural 10 frame bypassing the lower layers of glass.’” Id. at 1, 14–16 (quoting Def.’s MSJ at 19). Nothing 11 in that discussion of the doctrine of equivalents addresses the limitation of “fire rated glass.” See 12 id. at 14–16. Conversely, Plaintiffs’ response to Safti’s “alleged reason (3)” for summary 13 judgment—that “‘the GPX[] 120 fire rating applies to the entire floor, and no sub-part of it 14 satisfies the Court’s definition of a fire-rated floor’”—does not discuss the doctrine of equivalents 15 at all, instead relying solely on Plaintiffs’ unsuccessful argument that the lower portion of the 16 GPX 120 product consisted of a different product with its own fire rating. Id. at 1, 5–6. The 17 opposition brief therefore put neither Safti nor the Court on notice that Plaintiffs intended to 18 oppose summary judgment on this issue based on the doctrine of equivalents. 19 Plaintiffs reply brief similarly focused on load transfer, and on responding to Safti’s 20 argument that Plaintiffs should be estopped from relying on the doctrine of equivalents because 21 MacFarlane did not address it (except as to a patent claim for which Plaintiffs abandoned their 22 infringement contention) until his reply report and because, in Safti’s view, it was inconsistent 23 with the prosecution history. Pls.’ MSJ Reply at 5–6 (citing MacFarlane Reply Report at 3–6). 24 Plaintiffs argued that MacFarlane should be permitted to address the issue for the first time in his 25 reply report because Safti’s expert did not raise an issue related to load transfer until his rebuttal 26 report. Id. at 5. Plaintiffs did not argue that any issue related to the definition of “fire rated glass” 27 warranted the late-disclosed opinion. See id. As in their motion, this section of the reply included 1 Reply Report, however, includes a discussion of how each corresponding element in the accused 2 product performs substantially the same function in substantially the same way to achieve 3 substantially the same result as the corresponding element of the claim.” Id. (citing pages 3 4 through 6 of MacFarlane’s reply report). 5 The reply did not specifically argue that the lower layer was equivalent to fire rated glass 6 even if not actually fire rated, and even if it had, MacFarlane’s opinion on the subject was not 7 timely disclosed. The only reason Plaintiffs offered for MacFarlane first addressing the doctrine 8 of equivalents in his reply report was that, in Plaintiffs’ view, Safti disclosed for the first time in 9 its own expert’s rebuttal report the argument “that the accused [product] did not infringe any claim 10 of the ’475 patent because a load applied to the [structural glass] could induce a stress in the [fire 11 resistant portion] even when it is suspended above the structural frame by the [load transferring 12 means].” Id. at 5. To whatever extent that might be a valid reason for a late opinion on 13 equivalence regarding load transfer, it has no bearing on whether the lower layer is equivalent to 14 “fire rated glass,” and offers no excuse for an untimely opinion on that subject. The schedule in 15 this case called for opening expert reports by the party with the burden of proof on a given issue, 16 followed by rebuttal and reply reports addressing the issues raised therein. Further Patent Case 17 Mgmt. & Pretrial Order (dkt. 62) at 2, § II.B; see also dkts. 154, 176, 181 (continuing deadlines). 18 Plaintiffs had the burden of proof on infringement, and their expert should have addressed each 19 element of how the accused product infringed in his opening report, not for the first time in a reply 20 report to which Safti’s expert had no opportunity to respond. 21 Plaintiffs never specifically raised an argument that a non-rated fire resistant layer would 22 be equivalent to a fire rated layer, and that summary judgment should be denied to Safti on that 23 basis, in any brief or at the hearing before the Court took the matter under submission.7 As with 24 7 In a footnote of their proposed supplemental brief, Plaintiffs asserted that the evidence cited 25 therein “satisfies or, at the very least, creates a genuine issue of material fact as to the Court’s construction of ‘a layer of fire rated glass’ under both literal infringement and under the doctrine 26 of equivalents, i.e., that the fire-resistive portion of the accused GPX FireFloor System performs substantially the same function as the layer of fire rated glass in the patent invention, and does so 27 in substantially the same way and with substantially the same result.” Pls.’ Prop’d Supp’l Br. at 3 ] their argument regarding the appropriate claim construction, Plaintiffs are not entitled to 2 || reconsideration of an argument they did not timely raise. 3 || IN. CONCLUSION 4 Plaintiffs’ motion for leave to file a motion for reconsideration is DENIED for failure to 5 specifically show diligence in bringing the motion as required by this Court’s local rules. Even if 6 || Plaintiffs had shown diligence, the Court would deny the motion because the arguments Plaintiffs 7 || raise were not presented to the Court before summary judgment was granted. 8 The parties are reminded that, due to their repeated litigation of inconsequential issues at 9 || the outset of the case, the Court’s order dated August 12, 2019 imposed additional requirements 10 || before bringing any further motions: 11 [B]efore filing any further motion in this action, the parties must meet and confer to discuss whether the motion will materially affect the 12 outcome of the case, whether any effect of the motion is likely to be rendered moot by foreseeable future developments, and whether a mutually agreeable resolution can be reached. Any future motion must certify that the parties have met and conferred and were unable 14 to reach an agreement, and that the party bringing the motion believes that it is an appropriate use of resources at that stage of the case. 15 Q 16 || Order re Mot. to Dismiss Counterclaims & Strike Affirmative Defense (dkt. 68); see also dkt. 118.

17 || Plaintiffs’ noncompliance with that requirement in this instance is excused, but the Court expects

18 || the parties to follow all applicable orders going forward. 19 IT ISSO ORDERED. 20 || Dated: March 26 2021 21 CZ

J PH C. SPERO

22 ief Magistrate Judge 23 24 25 26 97 || was taken under submission. Cf United States v. Strong, 489 F.3d 1055, 1060 n.4 (9th Cir. 2007) (‘The summary mention of an issue in a footnote, without reasoning in support of the appellant’s 28 argument, is insufficient to raise the issue on appeal.’” (citation omitted)).