District Court decisions about invalidity contentions

We continue to update our collection of district court decisions addressing invalidity contentions.  The decisions include issues about supplementing contentions, motions to strike contentions, motions to amend contentions and late disclosure of contentions. We've now arranged the decisions by year of decision and jurisdiction.  With future updates to our case repository plug-in, we hope to provide a summary of the issues decided in each decision.

The decisions can be found here, or via links in the right hand side bar.

We are alerted to these decisions via daily email via an excellent case reporting service - DocketNavigator - this patent-related service reports on newly filed cases, verdict awards, claim construction terms and recent district court decisions.  We have no affiliation with DocketNavigator, although we highly recommend the service.

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.

Court decisions addressing invalidity contentions from 2008-2011

We have now posted links to over 50 district court decisions addressing supplementing invalidity contentions, motions to strike invalidity contentions, motions to amend invalidity contentions under local rules, late disclosure of invalidity contentions, and other nuances involving invalidity contentions (invalidity charts, section 103 contentions, differences between contentions and expert disclosures). In the near future these cases will be arranged into various categories.  For now, each decision is identified by Judge, year of decision, and litigants.

The decisions can be found here.

"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.

Supplementing invalidity contentions - Oracle v. Google

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:

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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.

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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.

700 pages of invalidity contentions are not "too voluminous"

Some people have inquired whether invalidity contentions can be too excessive based on page count alone.  In other words, if technology can generate invalidity contentions, including invalidity charts, won't a Court strike contentions that may appear to be overboard based on the total number of pages? Other than the rules in a jurisdiction and relevant case law, there does not seem to be clear guidance as to specific page counts.  If you can justify that the contention rules have been satisfied and that all the pertinent information that may be relied upon in the future is disclosed, a patent owner's arguments may ring hollow about your contentions if the only argument is based on page count.

In Tyco Healthcare v. E-Z EM Inc invalidity contentions order, Judge Ward (E.D. Tex 2010) explained:

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Excerpt from Tyco Health invalidity contentions decision

In other words, the 700 pages of invalidity contentions in Tyco were not the issue.  As long as a defendant provides meaningful information supporting its contentions, such as detailed charts with citations and an identification of how the claims are met by the references, a Court is not likely to disturb those contentions.  In contrast, the defendants in Saffran seemingly failed to provide the requisite notice of their invalidity contentions leading to the opposite conclusion.

Technology now allows you to include more pertinent information that is directly relevant to your contentions.  Instead of taking the Saffran approach, you should consider following the approach of E-Z-EM, Inc. and leverage the appropriate tools to efficiently manage your contentions.

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

Court orders reduction of claims and prior art contentions

Consider how you might handle this situation - a court order to consolidate your invalidity defense from 120 prior art references down to 8.  Although you wouldn't necessarily need to create all new charts, you probably would carefully consider how one set of references applied to the the reduced set of claims, better than another, when making that decision. This is what is unfolding in a widely watched litigation between Oracle and Google.  Groklaw has posted the Court's order and some commentary.  Below is a snipped summary of that order from The Inquirer:

Oracle submitted a total of 132 claims in seven patents and court documents reveal that Google identified "hundreds of prior art references". But US District Judge William Alsup said, "This is too much."

The narrowing of claims down to just three will be made in stages set out by Judge Alsup. The judge said that within seven days of the finalised claim construction Oracle will have to narrow its patent infringement case to 40 asserted claims. A further seven days after that, Google will have to narrow its case arguing patent invalidity to 120 prior art references. Judge Alsup said that this first stage should be completed by the end of May.

via Oracle has to toss 129 patent infringement claims in google lawsuit- The Inquirer.

In the end after the staged reductions, Oracle ends up with 3 asserted claims with Google limited to 8 prior art contentions. There are certainly a lot of variables to consider in this weeding-out process.

When I first learned of the decision and considered its impact, I thought about what changes could be made to PatDek to handle this very scenario.  Sure PatDek could help in deciding how to eliminate references for claims that were dropped, but how do you (or software) make a decisions about what reference or combinations of references is best against a claim.  This process appears to be a lot more subtle than just choosing between A or B.  How could this be accomplished when you have 15 strong candidates that need to be narrowed down to 8?  What makes one choice better than another when it's a close call between references?  How does Oracle approach this decision when deciding between very similar claims?

I'm going to need to think about the iterative decision process a little more to consider how an objective ranking criteria might apply.  Look for a post on this topic later or drop me a comment to start a discussion.

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.