Case: 3:20-cv-00098-wmc Document #: 81 Filed: 02/24/21 Page 1 of 3
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF WISCONSIN
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`PLASTIPAK PACKAGING, INC.,
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`Plaintiff,
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`v.
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`PREMIUM WATERS, INC.,
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` ORDER
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` 20-cv-098-wmc
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`Defendant.
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`Plaintiff Plastipak Packaging, Inc., alleges that defendant Premium Waters, Inc.’s
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`manufacture, use and sale of plastic water bottles infringes 12 of Plastipak’s utility patents.
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`In its complaint, plaintiff asserted infringement of 206 claims, although it appears from
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`the parties’ briefing that plaintiff has reduced the number of asserted claims to 74
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`(according to defendant) or 71 (according to plaintiff). Before the court is defendant
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`Premium Waters’ motion to reduce the number of asserted claims to 15. In support of its
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`motion, Premium Waters directs the court to two prior patent cases in which this court
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`reduced the number of asserted claims from 135 to 15 across 5 patents, see Havco Wood
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`Prod., LLC v. Indus. Hardwood Prod., Inc., No. 10-CV-566-WMC, 2011 WL 5513214, at *6
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`(W.D. Wis. Nov. 10, 2011), and from 71 to 16 claims across 7 patents, see Honeywell Int’l
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`Inc. v. Research Prod. Corp., No. 17-CV-723-WMC, 2018 WL 9669751, at *2 (W.D. Wis.
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`Apr. 17, 2018).
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`In response, plaintiff expresses a willingness to reduce the number of claims, but
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`contends that defendant should, in turn, be required to reduce the number of invalidity
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`contentions -- suggesting that defendant be limited to no more than 3 invalidity theories
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`(with each obviousness combination being a separate one). In support of this argument,
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`Case: 3:20-cv-00098-wmc Document #: 81 Filed: 02/24/21 Page 2 of 3
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`plaintiff represents that infringement is undisputed (although defendant refuses to
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`stipulate to it), and, therefore, the real concern about complexity in this case involves
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`defendant’s numerous invalidity theories and multiple primary prior art references.1
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`On February 24, 2021, the court held a Zoom hearing on defendant’s motion at
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`which the parties appeared by counsel. As discussed on the record during the hearing, the
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`court determined that requiring plaintiff to reduce its asserted claims to 21 -- more than
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`the number requested by defendant and more than that set by this court in the two patent
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`cases cited above -- was reasonable given the number of patents in suit (12), but also
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`considering that the patents are all related and contain overlapping, if not duplicative,
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`claims. To ensure fairness, the court similarly will require defendant to reduce the number
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`of invalidity contentions to a total of 21, with each obviousness combination constituting
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`a single contention, across these reduced 21 claims. As set forth below, the court also
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`established a schedule for the various disclosures and pushed back the dispositive motion
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`deadline to accommodate these submissions.
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`Accordingly, IT IS ORDERED that:
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`1) Defendant Premium Waters, Inc.’s motion to limit number of asserted claims
`(dkt. #72) is GRANTED IN PART AND DENIED IN PART as described
`above.
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`2) In light of this decision, the court sets the following deadlines:
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`• on or before February 26, 2021, defendant is directed to notify plaintiff of
`its 7 primary prior art references;
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`1 The parties also disputed the number of primary prior art references, with plaintiff representing
`that defendant had disclosed 11, but defendant stating in its brief and on the record, that it is only
`relying on 7. As such, the court will require defendant to provide plaintiff by February 26, 2021,
`with the list of 7 on which it intends to rely primarily in pursuing its invalidity contentions.
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`2
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`Case: 3:20-cv-00098-wmc Document #: 81 Filed: 02/24/21 Page 3 of 3
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`• on or before March 5, 2021, plaintiff is directed to file a list of the 21 claims
`that it seeks to pursue in this action;
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`• on or before March 12, 2021, defendant is directed to file a list of the 21 or
`less invalidity contentions organized by claim; and
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`•
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`the dispositive motion deadline is extended to March 26, 2021, with
`responses due April 23, 2021, and replies due May 14, 2021. The schedule,
`however, will not permit any further extensions absent good cause shown.
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`Entered this 24th day of February, 2021.
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`BY THE COURT:
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`/s/
`__________________________________
`WILLIAM M. CONLEY
`District Judge
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`3
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