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`UNITED STATES DISTRICT COURT
`DISTRICT OF MINNESOTA
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`Hutchinson Technology Inc.,
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`Plaintiff,
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`v.
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`Suncall Corp.,
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`Defendant.
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`Case No.: 0:21-cv-02618-SRN-DLM
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`ORDER ON DEFENDANT
`SUNCALL’S MOTION TO
`SUPPLEMENT THE RECORD
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`Alan G. Carlson, Erik G. Swenson, Mitchell R. Williams, and Tara C. Norgard, Carlson
`Caspers Vandenburgh Lindquist & Schuman PA, 225 S 6th Street, Suite 4200,
`Minneapolis, MN 55402, for Plaintiff
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`Abigail Teresa Reardon, Erik R. Fuehrer, Erin Larson, Jon Ikegami, Mary Catherine
`Dahl, Michael L. Burns IV (pro hac vice), Nathan Carpenter (pro hac vice), Robert
`Buergi (pro hac vice), Sangwon Sung (pro hac vice), and Soumitra Deka (pro hac vice),
`DLA Piper LLP (US), 1251 Avenue of the Americas, New York, NY 10020, also for
`Plaintiff
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`Faris Rashid, Jeanette M. Bazis, and Jeya Paul, Greene Espel PLLP, 222 S. Ninth Street,
`Suite 2200, Minneapolis, MN 55402, for Defendant and Counterclaimant
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`Benjamin J Bradford (pro hac vice), Erica Sedler (pro hac vice), Kaiwen Luan (pro hac
`vice), Mitchell Denti (pro hac vice), Miwa Shoda (pro hac vice), Nick G Saros (pro hac
`vice), Nicole Keenan (pro hac vice), and Paaras Modi (pro hac vice), Jenner & Block
`353 N. Clark St Chicago, IL 60654-3456, also for Defendant and Counterclaimant
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`SUSAN RICHARD NELSON, United States District Judge
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`This matter is before the Court on Defendant Suncall Corp.’s (“Suncall”) informal
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`Motion to Supplement the Court’s record on the parties’ Markman claim construction
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`briefing (See Doc. Nos. 88-90; 93-94, 133-134). Suncall seeks to supplement the record
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`with excerpts from the deposition testimony of several of Plaintiff Hutchinson Technology
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`1
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`CASE 0:21-cv-02618-SRN-DLM Doc. 219 Filed 12/14/23 Page 2 of 5
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`Inc.’s (“HTI”) witnesses—including named inventors on HTI’s asserted patents—and an
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`identification of the patents for which the deposition testimony is relevant.
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`Based on a review of the files and submissions herein, and for the reasons below,
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`the Court DENIES Defendant’s Motion.
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`I.
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`BACKGROUND
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`This case concerns patents for hard disk drive (“HDD”) suspension assemblies,
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`manufactured by both HTI and Suncall. Both parties have alleged that the other has
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`infringed on its patents in manufacturing HDD suspension assemblies and components sold
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`to third parties.
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`The Court held a Markman claim construction hearing on October 18, 2023. (Doc.
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`No. 152.) According to Suncall, it took the at-issue depositions after this hearing. On
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`December 13, 2023, Suncall filed this motion, and on the same day, HTI opposed it.1
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`II.
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`ANALYSIS
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`Suncall argues that good cause exists for Suncall to supplement the Court’s record,
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`as the relevant testimony was taken after the Court’s October 18, 2023 Markman hearing.
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`Suncall argues that it could not have elicited this testimony prior to the hearing due to
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`HTI’s alleged delay in disclosing documents relating to the patents-in-suit, as well as an
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`ongoing dispute concerning HTI’s alleged withholding of “documents related to the
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`1 Suncall did not submit a formal motion, but rather sought leave to supplement the
`record via an email to the Court and opposing counsel. As HTI had the opportunity to
`oppose Suncall’s motion in an email of its own, the Court will construe Suncall’s email as
`an informal motion, and will accordingly rule on the merits.
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`2
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`CASE 0:21-cv-02618-SRN-DLM Doc. 219 Filed 12/14/23 Page 3 of 5
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`conception and reduction to practice of its asserted patents, which are typically used in the
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`examination of a named inventor.”2
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`HTI argues that Suncall has long since passed the April 27, 2023 deadline for the
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`parties’ Joint Claim Construction Statement, which required the parties to identify any
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`extrinsic evidence “on which it intends to rely either in support of its proposed construction
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`of the claim or to oppose any other party’s proposed construction of the claim.” (Pretrial
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`Scheduling Order at 4-5.) It argues that Suncall opted not to seek inventor testimony until
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`after the parties had completed briefing for the Markman hearing, did not take any of the
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`at-issue depositions until after the hearing itself, and did not seek to amend the Pretrial
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`Scheduling Order to push back the Markman hearing. Moreover, HTI argues that courts
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`treat inventor testimony, submitted in connection with a Markman hearing, as less
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`significant and reliable as compared with the intrinsic record.
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`The Court may grant a motion to supplement the record at its discretion, as part of
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`its inherent power to manage its own docket. See FRCP Rule 1; see also Cutsforth, Inc. v.
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`LEMM Liquidating Co., LLC, No. CV 12-1200 (SRN/LIB), 2018 WL 847763, at *3 (D.
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`Minn. Feb. 13, 2018); Roche Diagnostics Operations, Inc. v. Abbott Diabetes Care, Inc.,
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`Civil Action No. 07–753–RGA, 2014 WL 6871579 at *4 (D.De. Dec. 5, 2014) (citing
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`2 This discovery dispute is the subject of separate motion practice. On November
`22, 2023, Magistrate Judge Douglas L. Micko issued an order [Doc. No. 170] clarifying
`his September 23, 2023 ruling from the bench granting in part and denying in part Suncall’s
`motion to compel discovery from HTI [Doc. No. 132]. On December 6, 2023, Suncall
`objected to Judge Micko’s ruling [Doc. No. 199]. Suncall’s objection is currently under
`review by this Court.
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`3
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`CASE 0:21-cv-02618-SRN-DLM Doc. 219 Filed 12/14/23 Page 4 of 5
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`Roche Diagnostics Operations, Inc. v. Lifescan Inc., 452 Fed. Appx. 989, 997 (Fed. Cir.
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`2012) (“In patent cases, the Federal Circuit has ‘left it to the discretion of the district court
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`whether and to what extent each party should be allowed to supplement the record with
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`additional briefing and evidence[.]’”)
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`Pursuant to Local Rule 16.3 and this case’s current Pretrial Scheduling Order [Doc.
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`No. 52], parties may not amend or supplement their submissions without good cause
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`shown. “The primary measure of good cause is the movant’s diligence in attempting to
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`meet the order’s requirements.” Sherman v. Winco Fireworks, Inc., 532 F.3d 709, 716 (8th
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`Cir. 2008); see also Monec Holding AG v. Motorola Mobility, Inc., Civil Action No. 11–
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`798–LPS–SRF, 2013 WL 12218319 at *4 (D.De. Nov. 5, 2013) (denying a motion to
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`supplement the record and holding that where the plaintiff located existing records after a
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`Markman hearing, “the court [was] not inclined to permit post–Markman supplementation
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`of the record to allow evidence that was previously available to counsel, but was
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`overlooked.”)
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`Suncall has not shown good cause to supplement the record. Suncall understood
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`that its decision not to seek inventor deposition testimony until later this year would
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`preclude that testimony from being submitted with the Markman briefing. Were this
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`testimony as vital as Suncall now contends, it could have sought to modify the Pretrial
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`Scheduling Order to change the date of the Markman hearing.
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`Moreover, pursuant to well-established law, inventor testimony is extrinsic
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`evidence, and is unlikely to meaningfully assist the Court with construction of the patent
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`claims currently before it. See Unwired Planet LLC v. Google, Inc., 660 F. App’x. 974,
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`4
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`CASE 0:21-cv-02618-SRN-DLM Doc. 219 Filed 12/14/23 Page 5 of 5
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`984 (Fed. Cir. 2016) (“the district court wrongly relied on the inventor’s testimony about
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`his subjective understanding of the meaning of” the claim term at issue because “this
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`testimony is irrelevant as a matter of law”); Howmedica Osteonics Corp. v. Wright Med.
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`Tech., Inc., 540 F.3d 1337, 1347 (Fed. Cir. 2008) (“[I]nventor testimony as to the
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`inventor’s subjective intent is irrelevant to the issue of claim construction.”); Oakley, Inc.
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`v. Sunglass Hut Int’l., 316 F.3d 1331, 1342 n.2 (Fed. Cir. 2003) (holding that an inventor’s
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`deposition testimony that the terms “vivid” and “strong” were synonymous was “of little
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`value in the definiteness analysis or claim construction.”). As such, even if provided to the
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`Court, Suncall’s supplemental material is unlikely to meaningfully assist the Court in its
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`claim construction.
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`III. CONCLUSION
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`Based on the submissions and the entire file and proceedings herein, IT IS
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`HEREBY ORDERED that Suncall’s Motion to Supplement the Record is DENIED.
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`Dated: December 14, 2023
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` /s/ Susan Richard Nelson _____.
`SUSAN RICHARD NELSON
`United States District Judge
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`5
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