The process to reduce asserted claims and limit invalidity contentions continues in Oracle v. Google. We discussed the procedure to narrow the case in an earlier post. In this August 8, 2011 Order, Judge Alsup criticizes Google for its delay in formally seeking to supplement its invalidity contentions. After disclosing the new theories of invalidity to Oracle during discovery, Google later requested permission to supplement its contentions after Oracle reduced the number of asserted claims from 132 claims down to 50 claims. The Court rejected this approach:
Overall, the Court rejected several attempts to add invalidity contentions under different theories based on Google's apparent delay in seeking "permission" to supplement its contentions. One set of contentions related to prior art appearing in reexamination requests. Google was, however, successful in supplementing its contentions based on references previously charted as anticipatory, but with the subject matter now reorganized to show obviousness.
This decision provides some clear guidance - provide charts for references relied on for local rules contentions, and if supplementing, seek permission immediately even if those contentions are disclosed as part of discovery. Failure to do so promptly may result in exclusion of those contentions.
We've talked now for months in this blog about how PatDek can help you in these exact situations. The software creates charts for you, identifies your section 102/103 contentions, and keeps track of what has been produced/disclosed. With litigation stakes increasing each year, why not use our software to make your contentions stronger and better organized when claims invariably change later in the litigation.