IN THE UNITED STATES DISTRICT COURT 

FOR THE WESTERN DISTRICT OF TEXAS 

WACO DIVISION 

JENS H.S. NYGAARD, 

Plaintiff, 

v. 

FÉDÉRATION INTERNATIONALE DE 

L’AUTOMOBILE, FORMULA ONE 

MANAGEMENT LTD., FORMULA ONE 

WORLD CHAMPIONSHIP LTD., 

MERCEDES-BENZ GRAND PRIX LTD., 

DAIMLER AG, LEWIS HAMILTON, 

REDBULL TECHNOLOGY LTD., RED 

BULL RACING LTD., FERRARI S.P.A., 

CHARLES LECLERC, and DALLARA 

AUTOMOBILI S.P.A., 

Defendants.

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Case No. 6:20-cv-00234-ADA 

JURY TRIAL DEMANDED 

DEFENDANTS’ REPLY IN SUPPORT OF THEIR CORRECTED 

MOTION TO STRIKE THE DOCTRINE OF EQUIVALENTS 

CONTENTIONS IN PLAINTIFF’S FINAL INFRINGEMENT CONTENTIONS 

AND PLAINTIFF’S THIRD AMENDED COMPLAINT (DKT. NO. 245) 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 1 of 18
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TABLE OF CONTENTS 

PAGE 

INTRODUCTION .......................................................................................................................... 1

ARGUMENT .................................................................................................................................. 1

I. Nygaard Did Not Follow This Court’s Orders. .................................................................. 1

II. Nygaard’s Charts Do Not Provide Adequate Notice Of His DOE Theories. ..................... 4

III. Most Of Nygaard’s DOE Contentions Are Legally Barred And Thus Futile..................... 7

A. Nygaard dedicated two of the three alleged equivalents of the “front 

windscreen” limitation to the public by disclosing but not claiming them. .................. 7

B. Nygaard fails to overcome prosecution history estoppel with respect to the 

“truncated sheared triangular pyramid” limitation. ...................................................... 8

CONCLUSION ............................................................................................................................. 10

CERTIFICATE OF SERVICE ..................................................................................................... 13

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 2 of 18
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TABLE OF AUTHORITIES 

PAGE

Cases

Apple Inc. v. Wi-LAN, Inc., 

No. 14CV2235 DMS (BLM), 2018 WL 9538772 (S.D. Cal. Mar. 2, 2018) ...................... 4 

Biagro W. Sales, Inc. v. Grow More, Inc. 

423 F.3d 1296 (Fed. Cir. 2005)......................................................................................... 10 

CommScope Techs. LLC v. Dali Wireless, Inc., 

No. 3:16-CV-0477-M, 2018 WL 4566130 (N.D. Tex. Sept. 21, 2018) ............................. 4 

CSP Techs., Inc. v. Sud-Chemie AG, 

643 F. App’x 953 (Fed. Cir. 2016) ..................................................................................... 7 

Dynetix Design Sols., Inc. v. Synopsys, Inc., 

No. C 11-5973 PSG, 2013 WL 4537838 (N.D. Cal. Aug. 22, 2013) ............................. 5, 6 

Eagle Pharm. Inc. v. Slayback Pharma LLC, 

958 F.3d 1171 (Fed. Cir. 2020)........................................................................................... 7 

Felix v. Am. Honda Motor Co., Inc., 

562 F.3d 1167 (Fed. Cir. 2009)........................................................................................... 9 

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 

535 U.S. 722 (2002) ........................................................................................................ 8, 9 

Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 

370 F.3d 1131 (Fed. Cir. 2004)........................................................................................... 9 

In re Papst Licensing GmbH & Co. KG Litigation, 

273 F.R.D. 339 (D.D.C. 2011) ............................................................................................ 2 

Insituform Techs., Inc. v. Cat Contracting, Inc., 

161 F.3d 688 (Fed. Cir. 1998)............................................................................................. 5 

Intellectual Ventures I LLC v. AT&T Mobility LLC, 

No. CV 13-1668-LPS, 2017 WL 658469 (D. Del. Feb. 14, 2017) ................................. 5, 6 

Intervet Inc. v. Merial Ltd., 

617 F.3d 1282 (Fed. Cir. 2010)......................................................................................... 10 

Johnson & Johnston Associates Inc. v. R.E. Serv. Co., Inc., 

285 F.3d 1046 (Fed. Cir. 2002)....................................................................................... 7, 8 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 3 of 18
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Nike Inc. v. Wolverine World Wide, Inc., 

43 F.3d 644 (Fed. Cir. 1994)............................................................................................... 2 

Norian Corp. v. Stryker Corp., 

432 F.3d 1356 (Fed. Cir. 2005)........................................................................................... 9 

O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 

467 F.3d 1355 (Fed. Cir. 2006)........................................................................................... 2 

Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., 

No. 16 C 9179, 2017 WL 1862646 (N.D. Ill. May 9, 2017) .............................................. 6 

Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 

739 F.3d 694 (Fed. Cir. 2014)............................................................................................. 9 

Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 

429 F.3d 1364 (Fed. Cir. 2005)........................................................................................... 7 

Rehco, LLC v. Spin Master, Ltd., 

No. 13 C 2245, 2014 WL 1088517 (N.D. Ill. Mar. 17, 2014) ............................................ 6 

Richtek Tech. Corp. v. uPI Semiconductor Corp., 

No. C 09-05659 WHA, 2016 WL 3136896 (N.D. Cal. June 6, 2016)................................ 4 

SanDisk Corp. v. Kingston Tech. Co., 

695 F.3d 1348 (Fed. Cir. 2012)........................................................................................... 7 

Sycamore IP Holdings LLC v. AT&T Corp., 

No. 2:16-CV-588-WCB, 2018 WL 1695231 (E.D. Tex. Apr. 6, 2018) ............................. 3 

Rules

FED. R. CIV. P. 16(f) ........................................................................................................................ 2 

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INTRODUCTION 

Defendants showed in their Motion that this Court should strike the doctrine of equivalents 

(“DOE”) contentions from both the Third Amended Complaint (“TAC”) and the final infringement 

contentions filed by plaintiff Jens Nygaard (“Nygaard”), for three reasons. First, the amendments 

adding these contentions were procedurally improper because they violated this Court’s express 

instruction that Nygaard seek leave before reintroducing DOE assertions, and that he support that 

request with new evidence received from the Defendants. Second, the DOE contentions fail to 

give adequate notice of Nygaard’s DOE theories because they offer only conclusory recitations of 

the “function-way-result” test. Third, most of Nygaard’s DOE contentions are futile because they 

are legally barred by the disclosure-dedication rule or prosecution history estoppel. 

Nygaard’s Opposition does not show otherwise. Instead, he resists the clear implications 

of black-letter law and this Court’s orders, attacks strawmen, and badly overstates the meager and 

inadequate disclosures he has provided. Thus, defendants respectfully request that the Court strike 

all of Nygaard’s DOE contentions in both his final infringement contentions and his TAC. 

ARGUMENT 

I. Nygaard Did Not Follow This Court’s Orders. 

As Defendants showed in their Motion, this Court accepted Nygaard’s withdrawal of DOE 

theories from this case more than a year ago at the case management conference. Dkt. No. 140 at 

14:8-15:14. And when Nygaard suggested that he “may need to revisit” DOE later, this Court 

expressly ordered Nygaard to seek permission from this Court before amending his pleadings or 

contentions to reintroduce DOE theories. Id. at 15:9-19. And this Court’s order specifically 

instructed Nygaard that the Court would entertain his request to reintroduce DOE theories only 

“[i]f you get new information from the defendants that you think would warrant you being able to 

... add a DOE claim back in.” Id. at 15:15-17 (emphasis added). 

Despite that unequivocal directive, Nygaard has never sought leave from this Court or 

pointed to any new evidence from any source, much less any of the Defendants. Instead, Nygaard 

unilaterally included new DOE contentions in his final infringement contentions served on June 4, 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 5 of 18
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and included even more new DOE contentions in his TAC filed on July 23. And every single piece 

of evidence Nygaard cites in support for these tardy DOE contentions was already publicly 

available to Nygaard last year when he served his Preliminary Contentions before the case 

management conference. Mot. 9 (enumerating examples). That repeated flouting of this Court’s 

orders alone justifies striking Nygaard’s DOE contentions and the DOE assertions in the TAC: a 

court may impose sanctions under Rule 16(f)—including striking contentions—for failure “to 

comply with court ordered requirements for the disclosure of infringement contentions.” In re 

Papst Licensing GmbH & Co. KG Litigation, 273 F.R.D. 339, 342–43 (D.D.C. 2011) (citing O2 

Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1363 (Fed. Cir. 2006)). 

Nygaard’s Opposition does nothing to disturb this straightforward conclusion. First, 

Nygaard objects that this Court’s OGP issued before the case management conference didn’t 

include a directive to seek leave before reintroducing DOE contentions. Opp. 6. Nygaard does 

not explain how the Court should have predicted that he would abandon his DOE theories at the 

conference, so that it could include such a directive in an order issued nearly two weeks earlier. 

Second, Nygaard attempts to elevate his counsel’s self-serving interpretation of this 

Court’s directive over this Court’s actual words. See Opp. 6 (the Court’s order “fairly was 

understood by the undersigned counsel to reference amending preliminary infringement 

contentions”). Nygaard’s counsel’s subjective interpretation cannot trump the plain and clear 

meaning of the Court’s directive, which “dismiss[ed] the claims of DOE”—removing them from 

the case entirely—and required leave of court before “amend[ing] the pleadings [to] add a DOE 

claim back in.” Dkt. No. 140 at 15:13-19.1

Third, Nygaard is simply mistaken that this Court’s later orders are to the contrary. 

Nygaard does not contend that any later order of this Court addressed its specific instructions as 

to Nygaard’s abandoned DOE theories. Opp. 6. Instead, Nygaard imagines that the Court’s Order 

1

 Nygaard’s repeated suggestion that he could ignore this Court’s order because it was oral, Opp. 

1, 5-7 is frivolous. See, e.g., Nike Inc. v. Wolverine World Wide, Inc., 43 F.3d 644, 647-49 (Fed. 

Cir. 1994) (affirming ruling precluding DOE claims as sanction for violating oral court order). 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 6 of 18
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Governing Proceedings (OGP) and scheduling orders silently countermanded the Court’s clear 

instruction at the case management conference. Id. But it is a bedrock legal principle that a 

specific rule or order overrides more general rules or orders. Mot. 8 n.1. The same is true here: 

while the OGP and the scheduling orders contain general rules covering general amendments to 

Nygaard’s contentions and pleadings, none of those orders purports to address DOE theories in 

particular, much less to relieve Nygaard of the need to seek leave before reintroducing DOE 

theories per this Court’s express and specific directive at the case management conference. 

Nygaard’s remaining objections largely attack strawmen. Defendants have never asserted 

that the OGP or scheduling orders imposed the need to base any reintroduction of DOE theories 

on new evidence from Defendants. See Opp. 7. Rather, that requirement was expressly imposed 

as part of the Court’s order at the case management conference. Supra 1-2. Nygaard does not 

dispute that fact. See Opp. 7-8 (arguing only that the requirement “is not supported by any of the 

Court’s written orders” (emphasis added)). Defendants referred to the OGP and scheduling orders 

to illustrate that the requirement to base amendments on new evidence should have come as no 

surprise to Nygaard. Mot. 7-8. And in any case, Nygaard does not dispute that every bit of 

evidence he cited in support of his tardy DOE contentions was publicly available at the time he 

abandoned them at the case management conference. Compare Mot. 8-9, with Opp. 5-10. 

Similarly, Nygaard simply misreads the majority of the other courts’ local rules he surveys 

as permitting a plaintiff free rein to amend contentions in the wake of a Markman order not wholly 

to its liking. See Opp. 7-8. Most do not. Instead they generally require that the plaintiff “believes 

in good faith” that the claim construction requires an amendment. See id. And that good-faith 

belief cannot exist where the court adopts the opposing party’s construction, or something else 

foreseeable. For example, “courts in the Eastern District of Texas have uniformly required the 

movant to show that the claim construction adopted by the court was ‘unexpected or 

unforeseeable’” to justify an amendment to infringement contentions after a claim construction 

order. Sycamore IP Holdings LLC v. AT&T Corp., No. 2:16-CV-588-WCB, 2018 WL 1695231, 

at *4 (E.D. Tex. Apr. 6, 2018) (collecting numerous cases). Furthermore, the court’s construction 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 7 of 18
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must have been unforeseeable “at the time of the parties’ claim construction briefing.” Id. Other 

courts have applied similar criteria. See, e.g., CommScope Techs. LLC v. Dali Wireless, Inc., No. 

3:16-CV-0477-M, 2018 WL 4566130, at *3 (N.D. Tex. Sept. 21, 2018) (rejecting amendment 

because plaintiff “does not contend that the claims construction adopted by the Court were 

unexpected”); Apple Inc. v. Wi-LAN, Inc., No. 14CV2235 DMS (BLM), 2018 WL 9538772, at *1-

2 (S.D. Cal. Mar. 2, 2018) (striking amended contentions filed on “the last possible day” where 

plaintiff “should have been aware of the risk that the Court could adopt [defendant’s] 

constructions” but never sought leave of court); Richtek Tech. Corp. v. uPI Semiconductor Corp., 

No. C 09-05659 WHA, 2016 WL 3136896, at *1 (N.D. Cal. June 6, 2016) (local rules acknowledge 

“that an unexpected claim construction ruling may, absent undue prejudice, support a finding of 

good cause”). But Nygaard cannot offer any reason why this Court’s claim constructions were 

unforeseeable. Indeed, he had known of them since before the case management conference, when 

some Defendants filed motions to dismiss based on the “front windscreen” limitation. 

These rules underscore an important purpose of requiring proper disclosure of infringement 

contentions early in the litigation: to ensure that the parties can appropriately direct claim 

construction to address the other party’s contentions. Nygaard’s eleventh-hour amendment 

deprived Defendants of that ability. Mot. 10. Nygaard’s opposition fails to address this clear 

prejudice to Defendants. Instead, Nygaard spills a great deal of ink on irrelevancies. Nygaard 

does not explain why continuing discovery or Defendants’ access to technical evidence has 

anything to do with the prejudice caused during the claim construction process. See Opp. 8-10. 

II. Nygaard’s Charts Do Not Provide Adequate Notice Of His DOE Theories. 

On one thing the parties agree. “Infringement contentions serve the purpose of putting the 

defendant on notice of the basis of the plaintiff’s infringement theories.” Opp. 11. The problem 

is that Nygaard’s DOE contentions fail to do this. 

As Defendants established in the Motion, “[e]ven though the magic ‘function, way, result’ 

words are not specifically required” in infringement contentions, a plaintiff nevertheless “has to 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 8 of 18
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describe how these requirements are met. Boilerplate is not enough.” Dynetix Design Sols., Inc. 

v. Synopsys, Inc., No. C 11-5973 PSG, 2013 WL 4537838, at *1 (N.D. Cal. Aug. 22, 2013); see 

also Intellectual Ventures I LLC v. AT&T Mobility LLC, No. CV 13-1668-LPS, 2017 WL 658469, 

at *3 (D. Del. Feb. 14, 2017)2; Mot. 10-11 (collecting other cases). But boilerplate is all Nygaard 

offers. In his contentions and pleadings, Nygaard attempts to rely solely on incomplete recitations 

of the function-way-result (FWR) test, where he provides any detail at all. He mentions at most 

one or two of the three prongs, and in no case does he explain how any of the prongs are met. See 

Mot. 11 (collecting examples). In particular, his explanations for the alleged “front windscreen” 

equivalents do not even reveal whether he contends that “deflect[ing] wind”3 is a function, a way, 

or a result. See Mot. 11-12. Nor can Nygaard merge the prongs of the test. Insituform Techs., 

Inc. v. Cat Contracting, Inc., 161 F.3d 688, 693–94 (Fed. Cir. 1998).4 Similarly, Nygaard fails to 

offer any explanation as to at least two prongs of the FWR test in his contentions for the “truncated 

sheared triangular pyramid” limitation. Mot. 12-13. His other contentions, for the “extends 

obliquely,” “extending in front of the driver’s position,” and “without requiring the driver to move 

the driver’s head” limitations, are similarly deficient. Mot. 13. All of them should be struck. 

Seeking to avoid this conclusion, Nygaard again attacks strawmen. Defendants have never 

argued that Nygaard must “set forth the comprehensive set of evidence” he will present at trial. 

2

 Nygaard vainly attempts to distinguish Intellectual Ventures by attacking a different portion of 

the decision. Opp. 11-12. To be sure, the Delaware court chiefly faulted plaintiffs for failing to 

apply both parts of the court’s construction when discussing its literal infringement contentions. 

See 2017 WL 658469, at *2-3. In discussing DOE, however, the court separately held that the 

plaintiff must both identify an equivalent and explain “how the accused products perform the same 

function in substantially the same way to achieve substantially the same result.” Id. at *3. 

Nygaard’s contentions do not provide that explanation. 

3

 Nygaard separately attempts to resurrect his rejected claim constructions in his contentions. See, 

e.g., Ex. 3 at 3-4 (contending that the “front windscreen” equivalents also “provide a dimensional 

point of reference”). This Court rejected Plaintiff’s construction of “front windscreen” as a point 

of reference, making his DOE contention doubly improper. Dkt. No. 207 at 2; Mot. 12. 

4

 Nygaard cannot distinguish this holding of Insituform based on its procedural posture. See Opp. 

13 n.8. Merging prongs of the FWR test is improper, full stop, at any procedural stage. Nygaard 

offers no authority for the odd proposition that he is permitted to invoke the FWR test as a basis 

for his DOE theories and then misapply that test however he wishes. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 9 of 18
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Opp. 11. Defendants insist only that he actually disclose the basis for his DOE contentions by 

“explain[ing] ‘how the accused products perform the same function in substantially the same way 

to achieve substantially the same result.’” Intellectual Ventures, 2017 WL 658469, at *3. Nygaard 

has not done so; where he provides any explanation at all, he merely parrots the formula, waves 

his hands at one or two of the prongs, and leaves Defendants to guess how the test is allegedly met. 

Furthermore, despite Nygaard’s protests, the majority of the DOE assertions in the TAC 

are indeed conclusory “bare assertions,” Opp. 11, that do not identify specific limitations or 

structures, much less any specific support such as a function, way, or result. See, e.g., TAC ¶¶ 1, 

251, 263, 267-269, 274-281, 285, 296, 300, 307, 311, 319, 323, 333-338, 340-342, 347-350, 354, 

373-376, 380, 390, 395, 398, 401-402, 411-412, 416; see also Mot. 6, 13. As Nygaard concedes, 

courts have readily concluded that such “boilerplate” and detail-free contentions are insufficient. 

Opp. 11 & n.7; see also Mot. 10-11; Oil-Dri Corp. of Am. v. Nestle Purina Petcare Co., No. 16 C 

9179, 2017 WL 1862646, at *6 (N.D. Ill. May 9, 2017); Rehco, LLC v. Spin Master, Ltd., No. 13 

C 2245, 2014 WL 1088517, at *5 (N.D. Ill. Mar. 17, 2014); Dynetix Design Solutions, Inc. v. 

Synopsys, Inc., No. C 11-5973 PSG, 2013 WL 4537838, at *1 (N.D. Cal. Aug. 22, 2013). The few 

DOE allegations in the TAC that do identify a limitation—the “extending in front of the driver’s 

position” and “without requiring the driver to move the driver’s head” limitations of claims 1 and 

4—nevertheless do not identify an alleged equivalent, much less any function, way, or result for 

either the limitation or the (unidentified) equivalent. See, e.g., TAC ¶¶ 267, 269. Nor can Nygaard 

rely on a lower pleading standard. See Opp. 11. He added these contentions for the first time in 

his TAC, nearly seven weeks after the deadline for disclosing his final infringement contentions, 

with no justification or any attempt to show good cause for missing the contentions deadline. 

In short, Nygaard is simply incorrect that his contentions “provide narrative explanation of 

why they are equivalent.” Opp. 13. Most of the DOE assertions provide no narrative at all. Those 

that do merely recite the FWR test and fail to provide any meaningful explanation of how it is met. 

The Court should strike all of the DOE theories in both Nygaard’s contentions and his TAC. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 10 of 18
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III. Most Of Nygaard’s DOE Contentions Are Legally Barred And Thus Futile. 

Nygaard’s opposition cannot save his DOE contentions for the “front windscreen” 

limitation (based on the driver’s helmet visor and the racecar nose) and the “truncated sheared 

triangular pyramid” limitation from being legally barred, and therefore futile. 

A. Nygaard dedicated two of the three alleged equivalents of the “front windscreen” 

limitation to the public by disclosing but not claiming them. 

As Defendants showed in their Motion, Nygaard disclosed two of his alleged equivalents 

for the “front windscreen” limitation in his patent specification, but declined to claim them. Mot. 

14-15. As a result, he dedicated those equivalents to the public and cannot recapture them through 

DOE. Johnson & Johnston Associates Inc. v. R.E. Serv. Co., Inc., 285 F.3d 1046, 1054 (Fed. Cir. 

2002); accord Eagle Pharm. Inc. v. Slayback Pharma LLC, 958 F.3d 1171, 1175 (Fed. Cir. 2020). 

Nygaard bases his entire argument to the contrary on the premise that the dedicationdisclosure rule applies only where a patent expressly identifies the disclosed equivalent as an 

alternative to a claimed limitation. Opp. 14-15 (citing Pfizer, Inc. v. Teva Pharmaceuticals USA, 

Inc., 429 F.3d 1364 (Fed. Cir. 2005) and SanDisk Corp. v. Kingston Tech. Co., 695 F.3d 1348 

(Fed. Cir. 2012)). Nygaard badly over-reads the case law. Nygaard cannot escape the disclosure 

dedication rule simply because “the specification does not explicitly state” that his claimed 

equivalents are alternatives. CSP Techs., Inc. v. Sud-Chemie AG, 643 F. App’x 953, 959 (Fed. 

Cir. 2016). Rather, as the Federal Circuit has made clear, 

the requirement Pfizer and SanDisk set out is not as far-reaching as CSP makes it 

out to be. ... The requirement [is not] one of form requiring us to identify some 

language specifically stating that an embodiment is an “alternative.” ... Instead, the 

requirement is one of substance where we determine from the specification's 

disclosure whether “one of ordinary skill would have come to the conclusion that 

the inventory[ ] ha[s] identified [the unclaimed embodiment] as an alternative to 

[the claimed embodiment].” 

Id. (quoting Pfizer, 429 F.3d at 1379). 

A person of ordinary skill would easily conclude that the ’178 Patent discloses but does 

not claim a strengthening member in a racecar embodiment that lacks a windscreen but has a sloped 

nose and a driver with a helmet. Indeed, the specification expressly describes the strengthening 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 11 of 18
8 

member “applied to a racing car” as depicted in Figures 63-74 as an embodiment of the alleged 

invention. See ’178 Patent at 22:22-51. And while the specification’s text may not expressly 

describe the helmet or the nose5 of the racecar, it provides more than sufficient disclosure of both 

in figures. As Defendants showed, Figures 66-68 clearly depict the driver’s round helmet with a 

rectangular visor at the front. Mot. 14-15 (annotating relevant figures). The same figures clearly 

depict the racecar’s nose, which, Nygaard’s protests notwithstanding, has a “dramatic downward 

slope.” Id.; Opp. 15. Indeed, the slope of the nose of the racecar depicted in the ’178 Patent is 

significantly steeper than on a Formula 1 car, where the nose is longer and more shallowly sloped. 

See Ex. 4 at 25, 54 (depicting 2019-2020 F1 racecars). Because Nygaard did not claim the depicted 

embodiments, they are dedicated to the public. Johnson & Johnston, 285 F.3d at 1054. 

B. Nygaard fails to overcome the prosecution history estoppel that bars all 

equivalents for the “truncated sheared triangular pyramid” limitation. 

Nygaard’s DOE contentions for the “truncated sheared triangular pyramid” limitation are 

legally barred by prosecution history estoppel. He presumptively surrendered all the territory 

between original claims 1 and 16 (which did not limit the strengthening member to any shape) and 

original claim 4 (which limited the shape to be “a triangular prism which has been sheared in a 

vertical plane” or “a truncated sheared triangular pyramid”) when he narrowed his claims to 

incorporate these shape limitations in response to the rejection of claims 1 and 16. Mot. 15-16; 

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 740-41 (2002) (“A 

patentee’s decision to narrow his claims through amendment may be presumed to be a general 

disclaimer of the territory between the original claim and the amended claim.”). Thus, by 

amending claim 16 (issued claim 1) to add these limitations from claim 4, and canceling claim 1 

5

 For the first time in his Opposition, Nygaard attempts to insert an additional new DOE theory 

that the “front wing” of a racecar, rather than its “nose,” is equivalent to the claimed “front 

windscreen.” Opp. 15. Nygaard did not include this assertion in his final contentions or his TAC, 

and indeed expressly circled portions of the racecar nose that exclude the front wing in his claim 

charts. See, e.g., Ex. 3 at 4. Nygaard has offered no good cause why he should be allowed to add 

yet another new DOE theory at this late date, much less to do so back-handedly in a brief. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 12 of 18
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and rewriting claim 4 to be independent, Nygaard presumptively surrendered all equivalents that 

are not one of these shapes, including the curved wishbone shapes of the Halo and Aeroscreen. Id.

Most of Nygaard’s opposition is misdirected to fighting this black-letter law. See Opp. 15-

18 (arguing that alternative shapes are not within the scope of the surrendered subject matter). 

Nygaard relies primarily on Pacific Coast Marine Windshields Ltd. v. Malibu Boats, LLC, 739 

F.3d 694 (Fed. Cir. 2014), but the Pacific Coast court specifically limited its holding—and the 

excerpt on which Nygaard relies—to the design patent context, where the claimed design is defined 

by the drawings. Id. at 704-05. Moreover, contrary to Nygaard’s assertions (Opp. 16, 17-18), that 

he narrowed his claims by incorporating the shape limitations from a dependent claim still gives 

rise to a presumption of a complete surrender. See, e.g., Honeywell Int’l Inc. v. Hamilton 

Sundstrand Corp., 370 F.3d 1131, 1144 (Fed. Cir. 2004) (“[T]he surrendered subject matter is 

defined by the cancellation of independent claims that do not include a particular limitation and 

the rewriting into independent form of dependent claims that do include that limitation. 

Equivalents are presumptively not available with respect to that added limitation.”); see also Felix 

v. Am. Honda Motor Co., Inc., 562 F.3d 1167, 1183-84 (Fed. Cir. 2009). Finally, Nygaard cannot 

avoid the presumption by noting that he need only have surrendered the shapes specifically 

disclosed in the prior art noted by the Examiner. Opp. 17. “To the contrary, it frequently happens 

that patentees surrender more through amendment than may have been absolutely necessary to 

avoid particular prior art. In such cases, we have held the patentees to the scope of what they 

ultimately claim.” Norian Corp. v. Stryker Corp., 432 F.3d 1356, 1361–62 (Fed. Cir. 2005). 

Nygaard also fails to carry his burden to rebut the Festo presumption by arguing his 

amendment bears only a “tangential relation” to the asserted equivalents—whose shapes he asserts 

are “inconsequentially different” from a “truncated sheared triangular pyramid.”.6 Opp. 18. This 

is not the correct standard. The reason for an amendment is not “tangential” to an alleged 

6

 It is undisputed that the other two exceptions to the Festo presumption do not apply here. 

Nygaard does not argue that the Halo and Aeroscreen shapes were “unforeseeable” or that some 

other reason prevented him from drafting a claim to literally cover their shapes. See Opp. 15-18. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 13 of 18
10 

equivalent if the amended limitation and the equivalent relate to the same feature. For example, 

in Biagro W. Sales, Inc. v. Grow More, Inc., the patentee overcame prior art describing a diluted 

fertilizer by adding a limitation that required the claimed fertilizer to be concentrated within a 

particular range of concentration. 423 F.3d 1296, 1306 (Fed. Cir. 2005). The Federal Circuit held 

that the rationale for the amendment was not “tangential” to the alleged equivalent with a 

concentration higher than the claimed range, “[b]ecause both the reason for the amendment and 

the asserted equivalent relate to the concentration of the fertilizer,” even though the concentration 

in the prior art was very different than in the accused product. Id. Similarly, here the reason for 

Nygaard’s amendment was not “tangential” to the allegedly equivalent shapes of the Halo and 

Aeroscreen, because the amendment and the alleged equivalents both relate to the same feature—

the shape of the strengthening member. The fact that the amendment overcame a rejection based 

on prior art that disclosed a different shape does not matter. Id.7

CONCLUSION 

For the foregoing reasons, Defendants respectfully request that the Court grant this motion 

and strike all of Nygaard’s infringement contentions and all of Nygaard’s assertions in his TAC 

that rely on the doctrine of equivalents. 

7

Intervet Inc. v. Merial Ltd., 617 F.3d 1282 (Fed. Cir. 2010), see Opp. 18, is not to the contrary. 

The Intervet court considered DNA sequences where the exact amount of overlap could be 

precisely computed. The court permitted plaintiff’s DOE theory based on a sequence with a 99.7%

overlap, where the claims recited four sequences that overlapped by only 96%. Id. at 1285, 1292 

(excluding alleged equivalents with overlaps as high as 76%). Nygaard falls well short of making 

such a precise showing here. He merely asserts without support that the curved wishbone shapes 

of the Halo and Aeroscreen are “inconsequentially different” from a “truncated sheared triangular 

pyramid” (Opp. at 18), when even a cursory glance reveals that these shapes are very different. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 14 of 18
11 

Dated: October 15, 2021 Respectfully Submitted 

/s/ Claudia Wilson Frost 

Claudia Wilson Frost – Lead Counsel 

State Bar No. 21671300 

Jeffrey L. Johnson 

State Bar No. 24029638 

ORRICK, HERRINGTON & SUTCLIFFE LLP

609 Main Street, 40th Floor 

Houston, TX 77002 

Telephone: 713.658.6400 

Facsimile: 713.658.6401 

cfrost@orrick.com

jj@orrick.com

Travis Jensen 

CA Bar No. 259925 

ORRICK, HERRINGTON & SUTCLIFFE LLP

1000 Marsh Rd. 

Menlo Park, CA 94025 

Telephone: 650.614.7400 

Facsimile: 650.614.7401 

tjensen@orrick.com

Jeffrey T. Quilici 

State Bar No. 24083696 

ORRICK, HERRINGTON & SUTCLIFFE LLP

300 W. 6th St, Suite 1850 

Austin, TX 78701 

Telephone: 512.582.6950 

Facsimile: 512.582.6949 

jquilici@orrick.com

ATTORNEYS FOR DEFENDANT 

FÉDÉRATION INTERNATIONALE DE 

L’AUTOMOBILE 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 15 of 18
12 

By:/s/ Douglas M. Kubehl 

Douglas M. Kubehl 

State Bar Number 00796909 

doug.kubehl@bakerbotts.com

Harrison Rich pro hac vice 

State Bar Number 24083730 

harrison.rich@bakerbotts.com

BAKER BOTTS L.L.P. 

2001 Ross Avenue, Suite 900 

Dallas, TX 75201 

Telephone: (214) 953-6816 

Facsimile: (214) 661-4816 

ATTORNEYS FOR DEFENDANTS 

FORMULA ONE MANAGEMENT 

LIMITED AND FORMULA ONE WORLD 

CHAMPIONSHIP LIMITED 

By:/s/ Edgar H. Haug 

Deron R. Dacus 

State Bar No. 00790553 

THE DACUS FIRM, P.C. 

821 ESE Loop 323, Suite 430 

Tyler, TX 75701 

Phone: (903) 705-1117 

Fax: (903) 581-2543 

ddacus@dacusfirm.com

Edgar H. Haug (pro hac vice) 

Mark A. Chapman (pro hac vice) 

Roman Khasidov (pro hac vice) 

Haug Partners LLP 

745 Fifth Avenue, 10th Floor 

New York, New York 10151 

Telephone: (212) 588-0800 

Facsimile: (212) 588-0500 

ATTORNEYS FOR RED BULL RACING 

LTD. AND RED BULL TECHNOLOGY 

LTD. 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 16 of 18
13 

CERTIFICATE OF SERVICE 

The undersigned certifies that on October 15, 2021, all counsel of record who are deemed 

to have consented to electronic service are being served with a copy of this document through the 

Court’s CM/ECF system under Local Rule CV-5(a)(3). Any other counsel of record will be served 

by a facsimile transmission or first-class mail. 

/s/ Jeffrey L. Johnson 

Jeffrey L. Johnson 

Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 17 of 18
Case 6:20-cv-00234-ADA Document 254 Filed 10/15/21 Page 18 of 18