Newly asserted method claims provide basis for invalidity contention supplement

In Medtronic Corevalve LLC v. Edwards Lifesciences Corp. (June 25, 2012), Judge Selna (Central District of California) granted Defendant Edwards' request to supplement its invalidity contentions to add additional prior art references.  The main basis for Defendant Edwards' request focused on a new search conducted by defendant after plaintiff asserted additional method claims in the litigation. The Court focused  on Patent Local Rule 3-6 of the Central District of California to consider permitting the requested supplements.  The Court explained that it

must first consider whether [Defendant] Edwards acted diligently in discovering the bases for the amendment and whether Edwards timely moved for leave to amend.  

(Order at 3).

The Court analyzed when the references were first identified by the Defendant, and then how long thereafter that the motion for leave to amend was filed.  As for prejudice, the Court noted that Plaintiff Medtronic has taken the position that is own infringement contentions are "preliminary," and thus it would be unfair for Medtronic to reserve its right to amend, while not granting that same benefit to Defendant.

In further analyzing potential prejudice, the Court summarized another argument raised by Plaintiff:

On the other hand, Medtronic contends that it will be prejudiced by the amendment because the parties will have exchanged their claim terms and proposed constructions by June 20, 2012, five days before this motion will be heard by the Court.  (Opp'n Br. 11.)  Therefore, Medtronic "will ... be forced to approach the early stages of claim construction without knowing whether the new references will be allowed into the case."  (Id.)  Furthermore, Medtronic worries that if good cause for the amendment is found her, Edwards will "almost certainly continue its 'search and analysis of relevant prior art'" and seek leave to amend the invalidity contentions again in the future.  (Id. at 12.)

The Court rejected this argument reasoning that the claim construction briefing is not due for several months, the trial is more than a year away, and further requests to supplement will require additional motion practice.  (Order at 6-7).

Takeaways - Diligence is the main focus of these types of motions.  Again, however, we see the consideration of a "claim construction" impact when evaluating a proposed invalidity contention supplement.   This prejudice to the claim construction process seems to be the main argument raised by a plaintiff when facing supplement requests.

Delays preclude invalidity contention supplements

In Apple v. Samsung (March 27, 2012), Judge Koh (Northern District of California) denied Samsung's request to supplement invalidity contentions.  Relying on Patent Local Rule 3-6, the Court noted that for amending prior art disclosures, good cause determination factors in the Northern District of California include:

Nonexhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) [a] claim construction order by the Court different from that proposed by the party seeking amendment; [or] (b) [r]ecent discovery of material, prior art despite earlier diligent search.

The Court further noted that prejudice only becomes a factor after diligence is first established.  Samsung unsuccessfully sought to amend its contentions for five prior art references.

For the Mac OS X 10.0 reference, diligence was not shown because "Samsung admittedly knew about the reference shortly after filing its initial invalidity contentions in October 2011."  Order at 3.  The Court rejected Samsung's argument that discovery delays by Apple excuse Samsung's delay in seeking an earlier supplement, based on Samsung's "acknowledgement" that it had good cause to supplement two and a half months earlier.

For the SuperClock reference, Samsung provided a proposed supplemental invalidity chart months earlier.  Diligence was again lacking because Samsung did not move to supplement the contention until several months after providing the invalidity chart for SuperClock.  Order at 5.

For the Glimpse prior art, Samsung admitted that it first became aware of the prior art, months before the requested supplement, during a deposition of an Apple employee.  Samsung, however, had difficulty utilizing a function version of the underlying source code.  Again the Court focused on the timeline of events, determining that the delay in moving to supplement negated the predicate diligence for the proposed supplement.  Order at 6-8.

For the Cirque GlidePoint reference, Samsung provided timely invalidity contentions that incorporated a patent directed to GlidePoint.  Samsung then sought discovery from Cirque for additional documentation about GlidePoint.  The Court focused on purported delays in seeking additional GlidePoint information through third party discovery, determining that Samsung had not established diligence in pursuing the additional discovery.  The Court therefore denied Samsung's request as to GlidePoint.  Order at 8-9.

For the Synaptics patent, the Court explained the different ways that Samsung was aware of the Synaptics patent.  Because Samsung did not provide an invalidity chart for this patent, the Court again determined Samsung failed to show diligence pursuing contentions involving the Synaptics patent.  Samsung relied on discovery issues involving third party discovery of Synaptics, but the Court focused on the requested supplement as to the patent itself, which Samsung was aware of earlier in the discovery period.  Order at 9-10.

Takeaways - this is a difficult case to reconcile.  It is understandable why Samsung did not seek immediate supplement for some of the prior art.  It lacked documentation to provide a compliant proposed supplement in support of its motion.  To avoid this problem in the future, it may be advisable to pursue a supplement once a party becomes aware of relevant prior art.  In other words, seek to amend contentions even without complete information to support the contentions, and be prepared to aggressively pursue discovery to obtain the missing information.  Although the proposed supplements will not necessarily include the actual contentions because of missing information, there will not be a time lag between first knowledge of the prior art and the underlying motion seeking to supplement your contentions, while you pursue the supporting documentation.

EDTX - Judge Folsom limits number of prior art references against asserted claims

In a recent Eastern District of Texas decision on February 14, 2012, Judge Folsom ruled that:

Defendants shall serve Invalidity Contentions that narrow the number of asserted prior art references in their Invalidity Contentions to no more than fifteen (15) individual references (i.e., not groups of references) asserted per claim or no more than eighteen (18) individual references per dependent claim where Plaintiff is also asserting a corresponding claim from which the dependent claim depends.  Defendants may not multiple [sic] the number of claims by fifteen or eighteen and arrive at a gross number of possible references.

While the result of this order might bring cheer to Plaintiffs' counsel in E.D. Tex., the order references an agreement memorialized in the Docket Control Order whereby "the parties had previously agreed that Defendants would narrow the number of asserted prior art references."  We're still reviewing the briefs (Plaintiff's Motion, Defendants' Opposition, Plaintiff's Reply) on this motion, but it appears that the Plaintiff agreed to limit the number of asserted claims in exchange for an agreement that the Defendants would consider limits on the number of relied upon prior art references.

Click the link to read the decision in MicroUnity Systems Engineering, Inc. v. Apple, Inc. et al.

"New" obviousness combinations excluded in ED Texas

This August 10 decision by Judge Folsom addresses Plaintiff's motion to strike "twenty eight new combinations of prior art" relied upon by Defendants.  Plaintiff argues that the combinations were not disclosed earlier as required by the Eastern District of Texas local patent rules, but admits that the underlying references were identified and charted as part of the Defendants' local rules contentions.

Defendants contended that:

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The Court analyzed Defendants' argument under the non-exhaustive, five-factor test and determined that supplementation was not warranted.  In particular, the Court noted that:

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The Court noted that local rule P.R. 3-3(b) requires a disclosure of the combinations that render a claim obvious.  Even though the prior art references were previously disclosed, the particular combinations were not disclosed.  The Defendants could have avoided this issue had the combinations been disclosed in its preliminary invalidity contentions.  For some reason, the combinations were not set forth even though each reference was included in a limitation-by-limitation claim chart in the contentions.  As discussed previously, PatDek provides all reasonable prior art combinations for use in preliminary invalidity contentions.  The Defendants did analyze the prior art, the specific combinations now relied upon were just not disclosed.

The Court rejected the balance of Defendants' other arguments.

We designed PatDek to specifically handle a substantial number of prior art references and to identify all prior art combinations (two or three-way combinations) that teach all elements of each target claim.  At the early stages of litigation, it is very difficult to know the specific combinations that will be important later in the litigation.  Because the local rules require an identification of relied upon combinations at this early stage, we designed PatDek to perform this analysis for you.

The PatDek license fee for an entire case is likely to be significantly less than the cost of motion practice directed to excluding your invalidity contentions.  Beyond the cost savings, you'll have all of your prior art organized to allow for changes to be made as the case evolves toward the expert and summary judgment phases.  Let us know if you would like access to PatDek for a 15 day, no-cost demonstration.

Revisiting an EDTX decision to strike invalidity contentions

In Anascape v. Microsoft et al., the Court ruled in favor of Anascape and struck various prior art references from the Defendants' expert reports. This decision is instructive for several reasons.  First, the Court considered the Magellan reference (discloses a type of game controller).  The excluded the Magellan reference on the ground that

The invalidity contention lists the Magellan reference in a chart, but fails to explain specifically where each element of each asserted claim is found in the Magellan controller. ... The controller is simply named among a long list of other references.

This meager attempt at a disclosure does not harmonize with the local patent rules.

Anascape at 6.

Second, the Court considered whether a generic term used to identify references sufficiently identifies several prior art references. The Court's analysis is below.

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Excerpt from Tyco Health invalidity contentions decision

Finally, the Court denied Defendants' motion to amend their invalidity contentions to include magazine publications describing Sony game controllers.  The Court declined the proposed supplement determining that the

parties with the vast combined resources of Defendants could have located them with relatively little effort.  

Anascape at 8.

This case, although several years old, demonstrates that the Courts are looking for specificity and precision for invalidity contentions, even when those contentions are served at the early stages of a litigation.  Managing your contentions, even without a thorough vetting of their full scope, is paramount to an effective, litigation defense strategy.

In current litigations there are too many asserted claims and too many prior art references to keep track of, especially when the contention disclosures are required to be made early.  Technology can help with this process.  Feel free to compare our approach with others to see what works best for your project or case.

CAND - Court grants Summary Judgment Motion as to 48 undisclosed prior art references

  In a lengthy opinion addressing an extensive set of issues on summary judgment, Judge Spero grants summary judgment for plaintiff Volterra of "no invalidity" based on 48 undisclosed prior art references in Volterra Semiconductor v. Primerion.

As to the 48 undisclosed prior art references, the defendant argued that plaintiff was on notice of some of this prior art during discovery:

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Volterra excerpt - prior art was disclosed (p. 10)

Defendant also argued that some of the prior art, although not disclosed in its local rules invalidity contentions, provides specific information about the knowledge of a person of ordinary skill in the art.  The Court reasoned that if this art "framed" their obviousness contentions, it should have been disclosed more timely as part of their local rules invalidity contentions.

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Volterra - knowledge of person of skill in the art (p. 122)

After rejecting defendant's rationales for not disclosing the prior art during the time specified for local rules contentions, the Court considered whether the local rules contentions could be amended to include the prior art as rebuttal evidence.  The Court declined this justification as good cause as well because, other than conclusory statements that the prior art was rebuttal evidence, there was no link between the prior art and the contentions being rebutted.

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Volterra - new prior art as rebuttal (p. 123)

Increased scrutiny by Courts for parties supplementing invalidity contentions

  Two recent District Court decisions (D. Mass. and E.D. Tex.) highlight the increased difficulty faced by defendants when seeking to supplement invalidity contentions. In one decision, Canrig Drilling v. Omron, Judge Davis (E.D. Tex.) denied defendant's request to supplement its invalidity contentions because the "delay" in presenting the items was not explained.

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Canrig excerpt

In another decision, Abbott v. Centocor, Judge Saylor (D. Mass) denied defendant's request to supplement its invalidity contentions "to account" for the Court's claim construction order because the reasons for changes were not articulated.  The Court reasoned that:

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Centocor excerpt

CAND decision re disclose prior art references in your invalidity contentions

PatDek also tracks document production information to ensure that the prior art is not only disclosed in contentions, but also produced as part of discovery.  Brilliant Instruments (see here and here) is a cautionary tale to seek permission before including undisclosed invalidity contentions in an expert report.

it is extremely important to disclose each and every prior art reference in the Invalidity Contentions, or otherwise you cannot use them to establish invalidity.  In Brilliant Instruments, Inc. v. GuideTech, Inc., 4-09-cv-05517 (CAND), District Court Judge Claudia Wilken granted Defendant’s motion to strike prior art references from plaintiff’s expert report that were not include in plaintiff’s invalidity contentions.

via It’s sooooo~ important to disclose each and every prior art reference in your Invalidity Contentions.

The administration portal allows you to define a Bates No. for your case.  In the event that the prior art was produced under a different Bates No. scheme from your case, there is also an alternative Bates No. field to cover those situations.  The Bates Nos. also appear in a list identifying all prior art considered in the case.  This is yet a further verification step to confirm that the prior art was analyzed and produced during the preliminary invalidity contentions stage of the case.