RB Distribution Incorporated et al v. Skyward Automotive Products LLC et al

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WO
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF ARIZONA
RB Distribution Incorporated, et al.,
Plaintiffs,
v.
Skyward Automotive Products LLC, et al.,
Defendants.
No. CV-23-01068-PHX-KML
ORDER
Plaintiffs Dorman Products, Inc. (“Dorman”) and its wholly-owned subsidiary RB
Distribution (“RB”) sued Skyward Automotive (“Skyward”) and Ningbo Skyward
Industrial Co. Ltd. (“Ningbo”) for infringing on plaintiffs’ patents by selling oil filter
products alleged to be “virtually identical” to theirs. (Doc. 1 at 2, 5.) In October 2025,
defendants made a second request to the U.S. Patent and Trademark Office (“USPTO”) to
reexamine the relevant patents. Skyward seeks to stay this case for a second time pending
that second reexamination and to amend its invalidity contentions. Dorman seeks sanctions
based on Skyward’s violation of an earlier discovery order. Skyward’s motions are denied,
Dorman’s is granted in part, and the scheduling order is amended as the parties jointly
request.
I. Factual and Procedural Background
After plaintiffs filed their original district-court complaint, defendants requested the
USPTO conduct an ex parte reexamination of the relevant patents, a process during which
the office reassesses the validity of a patent based on “substantial new questions of
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patentability.” (Doc. 20 at 4.) This court stayed the case during the pendency of the
USPTO’s review and lifted the stay in June 2024 when the USPTO found the patents were
valid. (Doc. 43.) The parties began discovery.
In March 2025, plaintiffs filed an amended complaint (Doc. 93) which added
allegations defendants had infringed another patent “in the same patent family” (Doc. 121
at 2). In October 2025, Skyward again requested the USPTO conduct ex parte
reexaminations of all four patents based on newly-discovered prior art. (Doc. 121 at 2-3;
see Doc. 120-1.)
The USPTO granted those reexamination requests and in January 2026, Skyward
moved to stay these proceedings pending the outcome of the reexamination.1 (Doc. 121.)
Skyward also separately moved for leave to amend its invalidity contentions to include the
same newly-discovered prior art that prompted its second reexamination request. (Doc.
118.)
In response to a discovery dispute, the court ordered defendants to supplement
certain discovery responses by March 30, 2026. (Doc. 126.) Defendants did not do so and
plaintiffs filed a motion for sanctions on that basis. (Doc. 141.) On April 9, 2026,
defendants’ counsel withdrew (Doc. 133); new counsel substituted on April 29, 2026. The
following week, the parties submitted a joint motion to extend deadlines proposing that
fact discovery now close on August 14, 2026. (Doc. 143.)
II. Analysis
A. Motion for Leave to Amend Invalidity Contentions
Skyward moved for leave to amend its invalidity contentions in November 2025.
(Doc. 118.) It alleges that “despite [an] earlier diligent search,” it recently discovered
material prior art that will help invalidate some of plaintiffs’ claims. (Doc. 118 at 4.)
This court’s scheduling order states that invalidity contentions may be amended
only upon a timely showing of good cause (Doc. 92 at 5-6). See Fed. R. Civ. P. 16(b)(4).
That standard “primarily considers the diligence of the party seeking the amendment.”
1 Ningbo apparently does not move for the same, but would be bound by a stay.
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Johnson v. Mammoth Recreations, Inc., 975 F.2d 604, 609 (9th Cir. 1992). If the party does
not show it was diligent, “the inquiry should end.” Id. It is the movant’s burden to establish
diligence. C & C Jewelry Mfg., Inc. v. West, No. 5:09-CV-01303-JF, 2011 WL 835821, at
*3 (N.D. Cal. Mar. 4, 2011).
Skyward’s bare-bones motion does not establish diligence. Setting aside that the
motion does not identify the prior art, it also fails to describe how Skyward discovered the
prior art and why it was not found previously “despite earlier diligent search.” (Doc. 118
at 4.) Skyward offers a “timeline regarding the discovery of the material prior art,” but that
timeline states only that Skyward “was not aware of the subject prior art [before the
relevant deadlines].” (Doc. 120 at 4.) The “timeline” shows nothing about what searches
Skyward actually made and whether it was diligent in doing so. MR Techs., GmbH v. W.
Digital Techs., Inc., No. 8:22-CV-1599-JVS-DFM, 2024 WL 1136133, at *3 (C.D. Cal.
Feb. 9, 2024) (party “must offer specific facts to explain why there was a delay in
discovering the prior art”). At base, Skyward’s unawareness of the prior art remains—
apparently intentionally (Doc. 120 at 4)—unexplained. And even after Dorman identified
the likely prior art from Skyward’s ex parte reexamination requests (see Doc. 119-1 at 2),
Skyward only half-heartedly tried to explain why it had not found one of the prior art
references—a British patent publicly available since 1995 (Doc. 120 at 7-8). That one lone
response says nothing about how Skyward searched for the prior art and its diligence. See
id.
Regardless of apparent prejudice, as Skyward itself explains, “the focus of the [good
cause] inquiry is upon the moving party’s reasons for seeking modification.” Johnson, 975
F.2d at 609. Skyward gives no convincing reasons showing it was diligent and its motion
is therefore denied.
B. Motion to Stay
Skyward requests the court stay this case during the second USPTO ex parte
reexamination. (Doc. 121.) Three of the four patents undergoing reexamination have
already survived that process once but the fourth is being reexamined for the first time.
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(Doc. 122 at 5.)
Courts have the “inherent . . . authority to order a stay pending conclusion of a PTO
reexamination.” Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1426-27 (Fed. Cir. 1988). Whether
a stay is appropriate depends on three factors: (1) “whether discovery is complete and
whether a trial date has been set,” (2) “whether a stay would unduly prejudice or present a
clear tactical disadvantage to the nonmoving party,” and (3) “whether a stay will simplify
the issues in question.” In re Cygnus Telecommunications Tech., LLC, Pat. Litig., 385 F.
Supp. 2d 1022, 1023 (N.D. Cal. 2005); see Telemac Corp. v. Teledigital, Inc., 450 F. Supp.
2d 1107, 1111 (N.D. Cal. 2006). Courts grant stays fairly liberally during these
reexaminations, particularly when cases are at the beginning stages of litigation. Telemac
Corp., 450 F. Supp. 2d at 1111.
This case is not at the beginning stages of litigation. When Skyward filed its motion,
fact discovery was set to close in a few months. (See Doc. 143.) Even granting the motion
to extend scheduling deadlines, the case is in its final stages and discovery will be set to
close in around three months. This factor weighs against granting a stay.
Next, plaintiffs have argued another stay would prejudice them. The length of a
proposed stay during the pendency of ex parte reexaminations is short enough that it is not
typically dispositive in finding prejudice. See In re Cygnus Telecommunications Tech.,
LLC, Pat. Litig., 385 F. Supp. 2d at 1024. But Skyward has not “provided definitive
guidance on the length of time required for” the reexamination. Visto Corp. v. Rsch. in
Motion Ltd., No. 2:06-CV-181-TJW-CE, 2007 WL 2900478, at *1 (E.D. Tex. Sept. 28,
2007) (denying stay in part because moving party did not provide guidance regarding
timeline); see Medicis Pharm. Corp. v. Acella Pharms. Inc., No. CV 10-1780-PHX-JAT,
2011 WL 587094, at *1 (D. Ariz. Feb. 9, 2011) (“the Court disfavors indefinite and
potentially lengthy stays pending the outcome of external proceedings.”). Other cases
suggest it could be as much as 21 months. See Verco Decking, Inc. v. Consol. Sys., Inc.,
No CV-11-2516-PHX-GMS, 2012 WL 12827398, at *4 (D. Ariz. Oct. 29, 2012).
Skyward’s failure to identify a timeline for the stay, which could be lengthy, contributes to
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a finding of undue prejudice.
Adding to that, plaintiffs also claim prejudice based on Skyward’s repeated attempts
to reexamine the patents. See Ultra Prods., Inc. v. Antec, Inc., No. C 09-04255 RS, 2010
WL 1688538, at *1, *3 (N.D. Cal. Apr. 26, 2010) (finding prejudice in part because moving
party’s “foot dragging” in discovery indicated motion to stay was dilatory tactic). Skyward
has delayed fulfilling its discovery obligations (see Doc. 141), filed for reexamination
based on prior art without explaining why it had not previously found that art, and
attempted to further delay discovery merely because its motion to stay was pending with
the court (see Doc. 126 at 2). Skyward’s requested stay and reexamination appear to be
part of a pattern of “foot dragging” and potentially dilatory tactics. See id. at *1, *3.
Last, “to truly simplify the issues” such that a stay would promote judicial
efficiency, the reexamination must “finally resolve all issues in the litigation.” Yodlee, Inc.
v. Ablaise Ltd., No. C-06-02451 SBA, 2009 WL 112857, at *5 (N.D. Cal. Jan. 16, 2009)
(simplified) (collecting cases). Courts are reluctant to stay patent litigation when some
issues would likely remain for decision regardless of the reexamination’s result. See id.
That is true where, like here, some of the relevant patents have already survived
reexamination and likely will survive another. Voda v. Medtronic Inc., No. CIV-09-95-L,
2011 WL 10636286, at *2 (W.D. Okla. Jan. 31, 2011) (where USPTO previously
confirmed patent, it was “not certain” defendants’ additional reexamination would
succeed). Even if most of the patents had not already survived reexamination, plaintiffs’
statistics and case-law suggest ex parte reexaminations very rarely result in patent
cancellations. (See Docs. 122-1; 122 at 8-9 (citing Fujitsu Ltd. v. Nanya Tech. Corp., No.
C 06-6613 CW, 2007 WL 3314623, at *3 (N.D. Cal. Nov. 6, 2007)).) Skyward does not
contest those statistics, and based on its discussion of prior art here the court is skeptical
the examination is likely to result in the cancellation of all four patents. See Yodlee Inc.,
2009 WL 112857, at *5.
Because all the factors weigh against a stay, Skyward’s motion is denied.
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D. Motion for Sanctions
Plaintiffs request sanctions “[b]ecause Defendants did not supplement their
discovery responses” by the court-ordered March 30 deadline. (Doc. 131 at 2.) They ask
the court to (1) award plaintiffs monetary sanctions no less than their attorneys’ fees and
expenses related to the discovery dispute and (2) preclude defendants from later relying on
evidence related to the discovery dispute. (Doc. 131 at 2.)
1. Factual Background
Defendants do not dispute that they failed to comply with the court’s discovery
order. (See Doc. 144 at 2.) Several circumstances suggest defense counsel was still in the
early stages of a search for the required supplemental information on the day of the
deadline: he told Dorman he would “ask Skyward for an updated response” to an
interrogatory and “expect[ed] to be able to provide supplemental responses” later that week
(Doc. 141-1 at 4-5); and separately, defendants allege he only made them aware of the
order’s compliance deadline that day (Doc. 144 at 5).
Roughly one week later, defense counsel filed a notice of withdrawal. (Doc. 128.)
Plaintiffs’ counsel told defense counsel that same day that they intended to file a motion
for sanctions due to defendants’ continued failure to comply with the court’s order. (Doc.
141-3 at 3.) The next day, defense counsel updated plaintiffs on the ongoing efforts but
again indicated Ningbo had not even fully begun a comprehensive search. (Doc. 141-3 at
2.)
On April 9, 2026, the court granted defense counsel’s motion to withdraw. (Doc.
133.) The next day, Skyward’s president personally sent an email to plaintiffs’ counsel
reflecting the company’s “initial efforts” to supplement the responses. (Doc. 141-2 at 2.)
That email contained documents plaintiffs allege are unresponsive to the relevant issues
and duplicative of ones previously produced. (Doc. 131 at 3.) New defense counsel later
requested these documents be destroyed because they contained privileged material. (Doc.
144-1 at 2.)
Defendants’ new counsel was granted pro hac vice status on April 29, 2026.
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Plaintiffs filed a motion for sanctions five days later, alleging defendants employed a
“strategy of delay.” (Doc. 141 at 3 (pointing to defendants’ position they should not be
required to fulfill discovery responsibilities while motion to stay is pending).) Defendants
did not send supplemental responses until May 15, 46 days after the court’s deadline. (Doc.
144 at 6; see 144-1.)
2. Analysis
Federal Rule 37(b)(2)(A) governs sanctions for a party’s failure to comply with a
discovery order. A sanctions order may strike pleadings and prohibit the disobedient party
from introducing certain matters into evidence. See Fed. R. Civ. P. 37(b)(2). Alternatively
or in addition, the court “must order” the disobedient party to pay reasonable expenses and
attorneys’ fees caused by the failure to comply with the discovery order. Fed. R. Civ. P.
37(b)(2)(C); see also Cruz v. Nike Retail Servs., Inc., 346 F.R.D. 107, 111 (S.D. Cal 2024).
To avoid sanctions, the disobedient party bears the burden of showing its conduct was
substantially justified or “other circumstances make the award of expenses unjust.” Fed. R.
Civ. P. 37(b)(2)(C); see also RG Abrams Ins. v. Law Offs. of C.R. Abrams, 342 F.R.D. 461,
521 (C.D. Cal. 2022). The “central factor in evaluating” a district court’s order granting
sanctions is justice, Valley Eng’rs Inc. v. Elec. Eng’g Co., 158 F.3d 1051, 1056 (9th Cir.
1998), which requires proportionality between the misconduct alleged and the sanction.
Rice v. City of Chicago, 333 F.3d 780, 784 (7th Cir. 2003).
Defendants argue they should not be sanctioned because they supplemented
discovery, but they did so 46 days after the deadline. “[B]elated compliance with discovery
orders does not preclude the imposition of sanctions.” Fair Hous. of Marin v. Combs, 285
F.3d 899, 906 (9th Cir. 2002) (simplified). Defendants’ arguments regarding the
withdrawal of counsel come closer to showing sanctions might be unjust. (See Doc. 144 at
11.) But counsel did not withdraw until well after the deadline had already passed. In fact,
more than a week after it lapsed, prior defense counsel sent emails indicating the work of
supplementing the responses was still in its infancy. (Doc. 141-3 at 2.) And even if an
extension to onboard new counsel (or based on discovery challenges) would have been
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appropriate, a party must actually seek an extension rather than silently disobeying a court
order. See Matrix Motor Co. Inc. v. Toyota Motor Sales, USA, Inc., No.
SACV03601CJCJTLX, 2003 WL 22466218, at *2 (C.D. Cal. May 8, 2003) (sanctions
justified in part because party “could have sought an extension of time” but rather “allowed
the Court’s deadline to slip by without taking any action”). Defendants have not alleged
“special circumstances” excusing their long delay. RG Abrams Ins., 342 F.R.D. at 521.2
It is therefore just and proportional to require defendants to reimburse plaintiffs for
costs resulting from the delay and failure to comply with the court’s order. As Rule
37(b)(2)(C) requires, the court therefore awards plaintiffs reasonable expenses and
attorneys’ fees related to defendants’ non-compliance.
Plaintiffs’ request to preclude defendants from relying on any evidence relating to
the relevant discovery, however, is not proportional to defendants’ behavior. See Rice, 333
F.3d at 784. Courts evaluate willfulness and bad faith when considering preclusionary
sanctions like these under Fed. R. Civ. P. 37(b)(2)(A)(ii), Life Techs. Corp. v. Biosearch
Techs., Inc., No. C-12-00852 WHA JCS, 2012 WL 1600393, at *11 (N.D. Cal. May 7,
2012), which are demonstrated if the moving party shows the disobedient conduct was not
“outside the control of the litigant.” Virtual Vision, Inc. v. Praegitzer Indus., Inc., 124 F.3d
1140, 1143 (9th Cir. 1997). Additionally, excluding evidence is not appropriate if the
failure to disclose was “substantially justified or harmless.” Yeti by Molly Ltd. v. Deckers
Outdoor Corp., 259 F.3d 1101, 1106-07 (9th Cir. 2001).
Defendants likely demonstrated willfulness and bad faith which was within their
2 Defendants also argue the motion for sanctions failed to comply with LRCiv 7.2(j) and
the court’s case management order because plaintiffs did not certify the parties engaged in
sincere efforts to resolve the discovery issue before filing. (Doc. 144 at 8-10.) But
plaintiffs’ emails clearly pressed defendants for compliance. More importantly, the motion
for sanctions at issue in this case does not qualify as a prohibited discovery motion. Dubey
v. Concentric Healthcare Sols. LLC, No. CV-22-02044-PHX-DJH, 2024 WL 3888463, at
*4 (D. Ariz. Aug. 21, 2024); see also Hoffman v. Constr. Protective Servs., Inc., 541 F.3d
1175, 1180 (9th Cir. 2008) (motion for sanctions under Fed. R. Civ. P. 37 was not a “motion
relating to discovery” requiring meeting under local rules). Plaintiffs need not show they
engaged in sincere efforts to convince defendants to obey a court order.
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control. See Virtual Vision, 124 F.3d at 1145 (finding party’s alleged lack of knowledge
about court-ordered discovery deadlines unpersuasive because party could keep abreast of
case status but did not). But plaintiffs have only generally alleged prejudice from the delay:
“having to spend litigation resources” is as specific as they get. (Doc. 145 at 3.) Discovery
is ongoing and the court will grant the parties’ joint motion to extend discovery deadlines.
The delay is therefore harmless at this stage and the court declines to award preclusionary
sanctions.3
E. Joint Motion to Amend Case Management Order
The parties’ joint motion to extend deadlines is appropriate given discovery needs,
the substitution of counsel, and the motion’s reasonable proposed deadlines. (Doc. 143.)
The motion is granted and the deadlines therein apply.
F. Claim Construction
The parties filed their claim construction briefs. (Docs. 114; 115; 117). Based on a
preliminary review of those briefs, it does not appear necessary to hold a claim construction
hearing. UTTO Inc. v. Metrotech Corp., 119 F.4th 984, 994 (Fed. Cir. 2024) (“there is no
procedural error in the mere fact that a court has construed claims without conducting a
separate Markman claim-construction set of proceedings, much less without hearing
extrinsic evidence or expert testimony”). The parties must file a joint statement indicating
whether either side believes a hearing is merited. If one side believes a hearing is needed,
that side must outline what evidence would be presented at such a hearing.
3 Defendants moved for leave to file a surreply in opposition to the motion for sanctions.
(Doc. 146.) Surreplies are highly disfavored, but may be appropriate when a party’s reply
includes new evidence or arguments. See Kaufman v. Warner Bros. Ent. Inc., No. CV-16-
02248-PHX-JAT, 2019 WL 2084460, at *2 (D. Ariz. May 13, 2019); see also Provenz v.
Miller, 102 F.3d 1478, 1483 (9th Cir. 1996). Here, plaintiffs’ reply contained nothing
materially new. (See Doc. 145 at 3, 6.) The court’s findings do not rely on the assertion
defendants wished to rebut. Defendants’ proposed surreply is therefore irrelevant to the
order’s outcome and its motion is denied. See Buncch v. S. Nevada Reg’l Hous. Auth., No.
2:25-CV-00660-GMN-BNW, 2026 WL 509399, at *8 (D. Nev. Feb. 23, 2026).
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Accordingly,
IT IS ORDERED the parties’ joint motion to extend deadlines (Doc. 143) is
GRANTED. The deadlines therein apply.
IT IS FURTHER ORDERED Skyward’s motion for leave to amend invalidity
contentions (Doc. 118) is DENIED.
IT IS FURTHER ORDERED Skyward’s motion to stay the case (Doc. 121) is
DENIED.
IT IS FURTHER ORDERED plaintiffs’ motion for sanctions (Doc. 141) is
GRANTED IN PART. Defendants must reimburse plaintiffs for attorneys’ fees and
expenses resulting from defendants’ failure to comply with the court’s March 9 discovery
order and delay in producing documents between March 30 and May 15, 2026. Within ten
days of this order the parties shall confer regarding the appropriate amount of attorneys’
fees and expenses to be awarded based on the terms of this order. If the parties cannot reach
an agreement, within twenty days of this order Dorman shall file a motion for attorneys’
fees consistent with the requirements of LRCiv 54.2.
IT IS FURTHER ORDERED no later than June 24, 2026, the parties shall file a
joint statement explaining their positions on the need for a claim construction hearing.
Dated this 17th day of June, 2026.
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