UNITED CONSTRUCTION PRODUCTS, INC., D/B/A BISON INNOVATIVE PRODUCTS, Plaintiff-Appellee
TILE TECH, INC., Defendant-Appellant
from the United States District Court for the Central
District of California in No. 2:14-CV-08570-R-VBK, Judge
Manuel L. Real.
von Gunten, von Gunten Law LLC, Denver, CO, argued for
plaintiff-appellee. Also represented by Michelle Correll,
Smith Correll LLP, Los Angeles, CA.
W. Cunningham, Cislo & Thomas LLP, Los Angeles, CA,
argued for defendant-appellant.
Moore, Wallach, and Stoll, Circuit Judges.
Wallach, Circuit Judge
Tech, Inc. ('Tile Tech") appeals the decision of the
U.S. District Court for the Central District of California
("District Court") granting default judgment and a
permanent injunction to United Construction Products, Inc.,
doing business as Bison Innovative Products
("United"), on claims of patent infringement and
unfair competition. See United Constr. Prods., Inc. v.
Tile Tech, Inc., No. 2:14-cv-08570-R-VBK, 2015 WL
7776795, at *6-8 (C.D. Cal. Dec. 1, 2015). We affirm.
case comes to our court following a series of delays, missed
deadlines, and other procedural missteps by Tile Tech that
are necessary to describe in full. United brought suit
against Tile Tech claiming infringement of U.S. Patent No. 8,
302, 356 ("the '356 patent"), which is entitled
"Support Pedestal Having an Anchoring Washer for
Securing Elevated Surface Tiles." '356 patent col. 1
ll. 1-3. Following transfer of the case to the District
Court, United, 2015 WL 7776795, at *1, United served
Tile Tech with its first set of discovery requests, including
interrogatories, requests for admission, and requests for
production, J.A. 140, 149, 282. Tile Tech missed the deadline
to respond to the discovery requests, and when contacted by
United, it claimed that it had not received the requests.
United, 2015 WL 7776795, at *2. Although service of
the requests was valid, United granted Tile Tech twenty
additional days to respond. Id. Tile Tech then
requested two additional extensions and finally served
initial responses to United nearly one month after the
original response deadline. Id.
Tech's responses to United's discovery requests were
deficient. Id. United requested a conference
regarding the responses and Tile Tech agreed, but two hours
before the scheduled conference, Tile Tech requested that it
be rescheduled. Id. United agreed and provided a
five hour time frame on Tile Tech's proposed date; Tile
Tech responded on the proposed rescheduled date and again
asked to postpone. Id. The conference was postponed
a third time, and eventually occurred following United's
warning to Tile Tech that it would file a motion to compel if
Tile Tech did not commit to a time for the conference.
Id. At the conference, Tile Tech agreed to
"supplement virtually every response to [United]'s
Discovery Re-quest[s] and to produce all responsive
documents" by an agreed-upon date. Id.
agreed-upon date passed with no response from Tile Tech.
Id. United offered to give Tile Tech ten additional
days beyond the agreed-upon date to adequately respond.
Id. at *3. When Tile Tech again failed to respond to
the discovery requests, United filed a Motion to Compel
Further Responses to Written Discovery and Production of
Documents and for Sanctions ("Motion to Compel").
Id.; J.A. 221. Tile Tech never responded to the
Motion to Compel. United, 2015 WL 7776795, at *3. It
instead served supplemental responses to the discovery
requests, which were still deficient, including unverified
responses to the interrogatories. Id. The District
Court took the Motion to Compel under submission, and Tile
Tech proceeded to provide a third set of deficient
supplemental responses. Id.
District Court issued an Order to Compel on October 5, 2015.
J.A. 421-23. It found that, inter alia, Tile Tech had
"failed to produce a single document in response to
[United]'s document requests and ha[d] failed to
supplement its deficient discovery responses, " and such
actions "create . . . a waste of this [c]ourt's
time." J.A. 421, 422. The District Court ordered Tile
Tech to respond to the discovery requests, imposed monetary
sanctions, and warned that it would enter default judgment if
Tile Tech did not comply with the Order by October 12, 2015.
J.A. 422. United's attorney stated in his declaration,
and the District Court found, that he informed Tile
Tech's attorney during a deposition on October 9, 2015,
that the Order to Compel had issued and that it included
sanctions. J.A. 918; United, 2015 WL 7776795, at *4.
Tech failed to respond to the Order. On October 12, 2015, United
filed its Motion for Entry of Default Judgment. J.A. 756-65.
Tile Tech responded and claimed that it had not known of the
Order's response deadline; that it had produced a set of
supplemental responses to the discovery requests; and that it
required an expert opinion to fully respond to part of the
discovery requests, which would be forthcoming. J.A. 813-14.
The District Court found that Tile Tech's claim of
producing additional responses was a "misrepresentation
to the [c]ourt" because no responses had been served as
of the filing of Tile Tech's Opposition to Motion for
Default Judgment. United, 2015 WL 7776795, at *4. In
addition, the District Court held Tile Tech's claim that
it would provide an expert witness was "facially
insufficient and unjustified" because the time to
designate an expert witness had "long passed."
Id. Moreover, although Tile Tech had produced only
two documents during the prolonged discovery period, both of
which were non-responsive, and had not disclosed any persons
with relevant knowledge in response to interrogatories
pursuant to Federal Rule of Civil Procedure 26(a)(1),
nonetheless listed over a dozen exhibits and over a dozen
potential trial witnesses in its Joint Exhibit and Witness
Lists disclosed at the end of the discovery period.
November 2, 2015, Tile Tech finally served another set of
supplemental responses, which contained information
disclosing its destruction of a previously undisclosed mold
used to make one key component of the disputed support
pedestal. Id. at *5. United filed a Motion for
Spoliation Sanctions, J.A. 1090-97, and filed an unopposed
Amended Complaint adding a claim for unfair competition, to
which Tile Tech never responded, J.A. 404-11 (Amended
Complaint); United, 2015 WL 7776795, at *5 (finding
that Tile Tech never responded to the Amended Complaint). The
District Court later entered default judgment, granted relief
for all of United's claims, and entered a permanent
injunction. United, 2015 WL 7776795, at *6-8.
Tech timely appealed. This court has jurisdiction pursuant to
28 U.S.C. § 1295(a)(1) (2012).
Tech raises two principal arguments on appeal, one concerning
the entry of default judgment and the other related to the
scope of the District Court's permanent injunction.
Appellant's Br. 14-28, 29-33. "A decision to
sanction a litigant [by ordering default judgment] pursuant
to Fed[eral] R[ule of] Civ[il] P[rocedure] 37 is one that is
not unique to patent law . . . and we therefore apply
regional circuit law to that issue . . . ."
ClearValue, Inc. v. Pearl River Polymers, Inc., 560
F.3d 1291, 1304 (Fed. Cir. 2009) (internal quotation marks
and citation omitted); see also Drone Techs., Inc. v.
Parrot S.A., 838 F.3d 1283, 1297 (Fed. Cir. 2016)
(considering an appellant's challenge to the imposition
of default judgment and stating that "[w]e are guided by
regional circuit law when reviewing discovery rulings . . .
and the imposition of sanctions" (internal citations
omitted)). In this case, we look to Ninth Circuit precedent,
and the relevant standard is articulated below. Because the
injunction "enjoins the violation of a right secured
by a patent . . . [it] involves substantive matters unique to
patent law and, therefore, is governed by the law of this
court." Hybritech Inc. v. ...