0912139 B.C. Ltd et al v. Rampion USA Inc et al, No. 2:2018cv01464 - Document 54 (W.D. Wash. 2019)
Court Description: ORDER granting in part and denying in part Plaintiffs' 33 Motion to Strike Defendants' Invalidity Contentions. The court further GRANTS Defendants leave to amend their invalidity contentions, consistent with the discussion herein, within 30 days of the filing date of this order. Signed by Judge James L. Robart. (SWT)
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1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 8 9 10 0912139 B.C. LTD, et al., CASE NO. C18-1464JLR Plaintiffs, 11 v. 12 13 RAMPION USA INC., et al., Defendants. 14 15 16 ORDER ON PLAINTIFFS’ MOTION TO STRIKE DEFENDANTS’ INVALIDITY CONTENTIONS I. INTRODUCTION Before the court is Plaintiffs 0912139 B.C. Ltd. (“B.C. Ltd.”) and Pakage Apparel, 17 Inc.’s (“Pakage”) (collectively, “Plaintiffs”) motion to strike portions of Rampion USA 18 Inc. and Rampion Enterprises Ltd.’s (collectively, “Defendants”) invalidity contentions. 19 (Mot. (Dkt. # 33).) Defendants oppose the motion. (Resp. (Dkt. # 40).) Plaintiffs filed a 20 reply.1 (Reply (Dkt. # 43).) The court has reviewed the motion, the parties’ submissions 21 1 22 Additionally, Defendants filed a surreply in which they move to strike portions of Plaintiffs’ reply, portions of the declaration of Nathan Brunette, and Exhibit 1 to Mr. Brunette’s ORDER - 1 1 concerning the motion, the relevant portions of the record, and the applicable law. Being 2 fully advised,2 the court GRANTS in part and DENIES in part Plaintiffs’ motion to strike 3 Defendants’ invalidity contentions. 4 5 II. BACKGROUND This is a patent infringement dispute. (See generally Compl. (Dkt. # 1).) B.C. 6 Ltd. owns, and Pakage is licensed to practice, U.S. Patent No. 9,687,030 (“the ’030 7 Patent”) and U.S. Patent No. 10,034,496 (“the ’496 Patent”) (collectively, “the Patents”), 8 which are directed to an undergarment for men. (See id. ¶¶ 19-24; see also id. ¶ 19, Ex. 9 3; id. ¶ 20, Ex. 4.) Plaintiffs allege that Defendants make and sell men’s underwear that 10 infringes the Patents. (See id. ¶¶ 31-64.) Defendants deny infringement and contend that 11 all the asserted claims of both Patents are invalid. (See Rampion USA Answer (Dkt. 12 # 18) ¶¶ 32-61; Rampion Enterprises Answer (Dkt. # 23) ¶¶ 32-61.) 13 On January 28, 2019, Defendants served their preliminary invalidity contentions.3 14 (Meiklejohn Decl. (Dkt. # 27) ¶ 2; see also Park Decl. (Dkt. # 34) ¶ 2, Ex. 1 (“Invalidity 15 Contentions”).) Several weeks later, on March 21, 2019, Plaintiffs filed the present 16 17 declaration. (Surreply (Dkt. # 46); see also Brunette Decl. (Dkt. # 44) ¶ 9, Ex. 1.) The court addresses Defendants’ surreply below. See infra § III.B.3 at n.5. 18 2 19 20 21 22 Defendants request oral argument on the motion (Resp. at title page), but the court finds that oral argument would not be helpful to its disposition of the motion, see Local Rules W.D. Wash. LCR 7(b)(4). 3 Shortly thereafter, the parties filed, and the court granted, a stipulated motion to allow Defendants to amend their preliminary invalidity contentions to assert an additional invalidity contention under 35 U.S.C. § 112. (See Stip. Mot. to Am. (Dkt. # 26); 2/6/19 Order (Dkt. # 28); see also Park Decl. (Dkt. # 34), ¶ 3, Ex. 2.) That amendment has no bearing on the present motion. (See Mot. at 1 n.1.) ORDER - 2 1 motion to strike portions of Defendants’ invalidity contentions for failure to comply with 2 Local Patent Rule 121. (See generally Mot.); Local Rules W.D. Wash. LPR 121. 3 4 5 III. A. ANALYSIS Legal Standard The Western District of Washington has adopted local patent rules that “require 6 parties to state early in the litigation and with specificity their contentions with respect to 7 infringement and invalidity.” 02 Micro Int’l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 8 1355, 1359 (Fed. Cir. 2006). These rules are “designed to require parties to crystallize 9 their theories of the case early in the litigation and to adhere to those theories once they 10 have been disclosed.” REC Software USA, Inc. v. Bamboo Sols. Corp., No. 11 C11-0554JLR, 2012 WL 3527891, at *2 (W.D. Wash. Aug. 15, 2012) (quoting O2 12 Micro, 467 F.3d at 1366 n.12). District courts have broad discretion to enforce local 13 patent rules. See, e.g., Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 14 (Fed. Cir. 2016). 15 Under Local Patent Rule 121, a party’s invalidity contentions must comply with 16 specific requirements. Local Rules W.D. Wash. LPR 121. Three of those requirements 17 are relevant to Plaintiffs’ motion. First, the invalidity contentions must identify “[e]ach 18 item of prior art that allegedly anticipates each Asserted Claim or renders it obvious.” Id. 19 LPR 121(b). To that end, “[p]ublic uses or sales shall be identified by specifying the item 20 offered for sale or publicly used or known, the date the offer or use took place or the 21 information became known, and the identity of the person or entity which made the use 22 or which made and received the offer, or the person or entity which made the information ORDER - 3 1 known or to whom it was made known.” Id. Second, the invalidity contentions must 2 state “[w]hether each item of prior art anticipates each Asserted Claim or renders it 3 obvious.” Id. LPR 121(c). “If a combination of items of prior art makes a claim obvious, 4 each such combination must be identified.” Id. Finally, the invalidity contentions must 5 include “[a] chart identifying where specifically in each alleged item of prior art each 6 element of each Asserted Claim is found . . . .” Id. LPR 121(d). Similarly, this court’s 7 Standing Patent Order requires a party’s invalidity contentions to include “a chart that 8 identifies where in each piece of prior art each element of each asserted claim is found.” 9 SPO, https://www.wawd.uscourts.gov/sites/wawd/files/RobartStandingPatentOrder.pdf, 10 at 2. 11 As this court has recognized, Local Patent Rule 121 closely tracks the language of 12 a similar local patent rule in the Northern District of California. REC Software, 2012 WL 13 3527891, at *5 n.4 (citing N.D. Cal. Local Patent Rule 3-3). Accordingly, the court finds 14 persuasive authority from the Northern District of California involving motions to strike 15 invalidity contentions for failure to comply with the local patent rules. See id. at *2 16 (“[B]ecause of the strong similarity between the local patent rules of the Northern District 17 of California and the Local Patent Rules of this District, the court views the Northern 18 District of California cases interpreting their own local patent rules to be of assistance in 19 this court’s effort to fashion its own standard.”). 20 B. 21 22 Plaintiffs’ Motion Plaintiffs move to strike Defendants’ invalidity contentions on four grounds: (1) Defendants “purport to preserve a right to rely on unidentified references, unidentified ORDER - 4 1 portions of references, and unidentified combinations of references”; (2) Defendants 2 identify “four different categories of products” that allegedly constitute prior art but fail 3 to identify the “who, what, and when of the alleged use or sale” of those products, as 4 required under Local Patent Rule 121(b); (3) Defendants’ lists of references and claim 5 charts do not identify obviousness combinations with the level of specificity mandated by 6 Local Patent Rule 121(c); and (4) Defendants’ claim charts do not identify where each 7 claim element may be found in each alleged item of prior art, in violation of Local Patent 8 Rule 121(d). (Mot. at 1, 4.) 9 Defendants insist that the invalidity contentions served on January 28, 2019, 10 satisfy the Local Patent Rules. (Resp. at 1.) Additionally, alongside their response to 11 Plaintiffs’ motion, Defendants submitted proposed amended invalidity contentions that 12 purport to address Plaintiffs’ complaints and “clarify [Defendants’] already-disclosed 13 positions.” (Id. at 1-2; see also Kolter Decl. (Dkt. # 41) ¶ 14, Ex. 1 (“Prop. Am. 14 Invalidity Contentions”).) Defendants request that, should the court determine that 15 Defendants’ invalidity contentions are deficient, Defendants be granted leave to use their 16 amended invalidity contentions or further amend. (Resp. at 4.) 17 The court addresses Plaintiffs’ challenges in turn. 18 1. Reservations of Right 19 Plaintiffs move to strike various “reservations of right” throughout Defendants’ 20 invalidity contentions. (See Mot. at 7-9.) According to Plaintiffs, those clauses purport 21 to preserve Defendants’ right “to rely on unidentified references, unidentified portions of 22 references, and unidentified combinations of references.” (Id. at 7.) Plaintiffs identify ORDER - 5 1 approximately 14 paragraphs or portions of paragraphs in which such reservations of 2 right appear. (See Invalidity Contentions at 2-4, 7, 8, 16 (highlighted portions).) 3 According to Plaintiffs, these clauses “are improper because they do not provide the 4 specific information required by LPR 121.” (Mot. at 8.) 5 Many of the reservations of right Plaintiffs identify are unproblematic. For 6 instance, Defendants reserve the right to supplement or amend their invalidity contentions 7 to address “newly discovered art, new constructions of the terms of the Patents[], and/or 8 new theories of invalidity.” (Invalidity Contentions at 2.) Similarly, Defendants reserve 9 the right to amend their invalidity contentions should Plaintiffs “modify any assertion or 10 contention in their Infringement Contentions.” (Id. at 3.) As Defendants correctly 11 observe, any such amendment to its invalidity contentions would be governed by Local 12 Patent Rule 124, which requires “a timely showing of good cause.” Local Rules W.D. 13 Wash. LPR 124; (see also Resp. at 5.) Put otherwise, the above-cited clauses do nothing 14 more than acknowledge Defendants’ right to move for leave to amend their invalidity 15 contentions at a later date. (Resp. at 5.) Reservations of right to that effect do not 16 contravene Patent Rule 121. See Local Rules W.D. Wash. LPR 124 (good cause to 17 amend may include claim construction and recent discovery of material prior art); see 18 also Medtronic, Inc. v. AGA Med. Corp., No. C-07-0567-MMC (EMC), 2009 WL 19 513370, at *4 (N.D. Cal. March 2, 2009) (denying a motion to strike upon finding that 20 the local patent rules did not “require[] a party to assert a claim of invalidity which is 21 only conditional and contingent on the opposing party’s position”). 22 // ORDER - 6 1 However, Plaintiffs identify other reservations of right—in Defendant’s original 2 invalidity contentions as well as their proposed amended contentions—of a different 3 character. In those clauses, Defendants appear to reserve a right to rely upon unidentified 4 or uncited portions of certain references, even absent amendments to their invalidity 5 contentions. For example, with respect to their invalidity claim charts, Defendants state: 6 8 Defendants have endeavored to identify exemplary disclosures in the prior art references that satisfy the associated claim elements. . . . The citations and quotations in the charts are representative and should not be construed as limiting. For each reference, Defendants intend to rely on the reference in its entirely, rather than only on the identified excerpts thereof. 9 (Invalidity Contentions at 7; Prop. Am. Invalidity Contentions at 8.) Additionally, 7 10 Defendants seek to “reserve the right to rely upon foreign counterparts of U.S. patents 11 identified in these Preliminary Invalidity Contentions and U.S. and foreign patents, patent 12 applications, articles and publications corresponding to the patents, products, articles, and 13 publications identified in these Preliminary Invalidity Contentions.” (Invalidity 14 Contentions at 4; Prop. Am. Invalidity Contentions at 4.) 15 The court understands why these and similar reservations of right have raised 16 Plaintiffs’ hackles: rather than simply preserving Defendants’ right to amend the 17 invalidity contentions, these clauses may be read to safeguard Defendants’ ability to rely 18 on unnamed prior art references or uncited portions of references down the road, even 19 absent an amendment. Defendants, however, cannot effect an end-run around Local 20 Patent Rule 124’s good cause requirement by incorporating by reference uncited material 21 or reserving a right to rely upon uncited material. See Ironworks Patents LLC v. 22 Samsung Elecs. Co., Ltd., No. 17-cv-01958-HSG(JSC), 2017 WL 4573366, at *3 (N.D. ORDER - 7 1 Cal. Oct. 13, 2017) (striking the defendant’s list of 29 “Additional References” where the 2 defendant sought to reserve the right to “rely on these references as invalidating prior 3 art,” depending on subsequent developments in the litigation); see also Mitsubishi Elec. 4 Corp. v. Sceptre, Inc., No. 2:14-cv-04994-ODW (AJWx), 2015 WL 2369557, at *2-3 5 (C.D. Cal. May 18, 2015) (striking portions of invalidity contentions that “purported to 6 reserve the right to rely upon cited portions of th[e] references” cited in the claim charts). 7 The court thus GRANTS Plaintiffs’ motion to strike all clauses in the invalidity 8 contentions that purport to allow Defendants to rely on uncited references or uncited 9 portions of references as invalidating prior art. The court DENIES Plaintiffs’ motion to 10 strike any reservations of right that acknowledge Defendants’ prerogative to move to 11 amend their invalidity contentions in accordance with Local Patent Rule 124. 12 2. Failure to Identify Specific Products 13 Plaintiffs also seek to strike all “reference[s] to [the] alleged prior use or sale” of 14 four categories of underwear “products” that Defendants have identified as alleged prior 15 art: (1) “Andrew Christian products with ‘Show-It’ technology” (2) “Saxx underwear 16 products,” (3) “Body Tech line from UnderGear,’” and (4) “Lift Collection.” (Mot. at 4; 17 see also Invalidity Contentions at 6.) Plaintiffs assert that, because Defendants have 18 identified these four categories of products by company name only, rather than “product 19 name,” Defendants’ references to and reliance on these product categories violate Local 20 Patent Rule 121(b). (Mot. at 4-5.) 21 22 Defendants’ invalidity contentions identify alleged prior art in two parts: (1) prior art “[r]eferences,” which cite various patents, and (2) prior art “[p]roducts,” which list the ORDER - 8 1 four categories of underwear products Plaintiffs highlight. (Invalidity Contentions at 6.) 2 Specifically, the invalidity contentions identify prior art products as follows: 3 Product 4 Andrew Christian products with “Show-It” technology (also referred to as Show-It Technology 2.0) 5 On-Sale Date At least as early as March 6, 2009 (see documents produced) 6 (“Andrew Christian Show-It Underwear”) 7 8 At least as early as March 2009 Saxx underwear products 9 10 See http://www.youtube.com/watch?v=mfk3tJzZKPs (“The Evolution of Saxx”) 11 (see documents produced) 12 At least as early as May 1, 2009 Body Tech line from UnderGear featuring an “enhancement pouch” 13 14 (see documents produced) Currently unknown 2(x)ist products with “dual lifting technology” (Lift Collection) 15 (see documents produced) 16 (Id.) Defendants’ proposed amended invalidity contentions include essentially the same 17 chart, albeit with specific references to documents produced and the date of production. 18 (See Prop. Am. Invalidity Contentions at 6-7.) Additionally, the claim charts that 19 accompany Defendants’ invalidity contentions feature numerous references to the four 20 // 21 // 22 ORDER - 9 1 categories of products. (See generally Park Decl. ¶ 4, Ex. 3 (“Invalidity Charts”) at 2 Charts A1-G2; Prop. Am. Invalidity Contentions at Charts A1-G2.4) 3 Defendants argue that striking references to the four categories of prior art 4 products “would be premature and inconsistent with the notice policy behind invalidity 5 contentions.” (Resp. at 7.) Defendants explain that they identified the alleged prior art 6 products “[a]fter a diligent search . . . based on third party web pages and the Internet 7 Archive,” and that “[t]he products described in those pages are almost a decade old and 8 no longer readily available.” (Id. at 6.) Defendants further represent that they have 9 “prepared third party subpoenas and letters rogatory to try to obtain samples of these 10 products including specific dates of sales and use, entities involved, and product names or 11 model numbers,” but, as of the filing of their response, Defendants “included all the 12 product information in [their] possession in [their] Contentions.” (Id. at 6-7.) Defendants 13 state that they will seek leave to amend their invalidity contentions “to add newly 14 discovered information once, and if, it is received.” (Id.) 15 The court agrees with Plaintiffs that, with respect to the identification of prior art 16 “products,” neither Defendants’ existing invalidity contentions nor their proposed 17 amended invalidity contentions comply with Local Patent Rule 121(b). Local Patent 18 Rule 121(b) requires that a party identify public uses or sales of the claimed invention 19 with a degree of precision not present in Defendants’ existing disclosure of alleged prior 20 art products—namely, Defendants fail to identify any specific products that fall within 21 When citing the Invalidity Charts, the court cites the chart number (e.g., “A1”) followed the page number that appears in bold in the top-right corner of the chart. 4 22 ORDER - 10 1 the four categories. See Local Rules W.D. Wash. LPR 121(b) (stating that “[p]ublic uses 2 or sales shall be identified by specifying the item offered for sale or publicly used or 3 known”); (Invalidity Contentions at 6.) As Plaintiffs point out, the “documents 4 produced” to which Defendants refer in their invalidity contentions indicate that the listed 5 companies offered or offer several different products, none of which are specified in 6 Defendants’ invalidity contentions or the accompanying claim charts. (See Mot. at 5; see, 7 e.g., Invalidity Charts, Chart A1 at 12-18 (referring generally to Andrew Christian 8 boxers, briefs, and an unidentified sketch of an Andrew Christian product).) 9 Defendants essentially concede that their product references are deficient. (See, 10 e.g., Resp. at 11 (“As to the product prior art, Rampion simply does not have it—but it 11 provided everything it does have . . . .”).) Defendants’ “lack of information to support 12 [their contentions] does not justify non-compliance” with Local Patent Rule 121(b). See 13 Rambus Inc. v. NVIDIA Corp., No. C-08-03343 SI, 2011 WL 13249391, at *3 (N.D. Cal. 14 Nov. 29, 2011) (ordering the defendant to “complete its investigation, and provide the 15 information required by [the local patent rules], or . . . remove the prior art references for 16 which it lacks the required information”). If Defendants discover evidence regarding a 17 product sufficient to support its invalidity contentions, they may move for leave to amend 18 their invalidity contentions. At this time, however, the court GRANTS Plaintiffs’ motion 19 to strike all references to the four product categories identified above, both in 20 Defendants’ invalidity contentions and the accompanying claim charts, for failure to 21 comply with Local Rule 121(b). 22 // ORDER - 11 1 3. Obviousness Combinations 2 Local Patent Rule 121(c) requires that a party disclose “[w]hether each item of 3 prior art anticipates each Asserted Claim or renders it obvious,” and, “[i]f a combination 4 of items of prior art makes a claim obvious, each such combination must be identified.” 5 Local Rules W.D. Wash. LPR 121(c). Defendants’ obviousness contentions have two 6 parts: first, 14 lists of references—seven per Patent—enumerated in section III of the 7 invalidity contentions; and second, hundreds of pages of claim charts that purport to set 8 forth Defendants’ obviousness combinations in greater detail. (See Invalidity 9 Contentions at 9-15; Invalidity Charts at A1-G2.) Plaintiffs argue that both the lists of 10 references and the accompanying claim charts fail to disclose the precise combinations of 11 prior art on which Defendants will rely to show obviousness and fail to specify which 12 patent claims are implicated by those combinations. (Mot. at 10-11; see also Reply at 13 2-4.) Defendants respond that the lists of references merely summarize the prior art 14 references described in each claim chart, and that the claim charts adequately identify the 15 combinations of prior art on which Defendants will rely to establish obviousness. (Resp. 16 at 7.) 17 The court agrees with Plaintiffs that the lists of references enumerated in 18 Defendants’ invalidity contentions are deficient. The lists set forth “buckets” of 19 references that would support virtually endless permutations of prior art combinations. 20 (See Invalidity Contentions at 9-15.) That approach is consistently rejected in the case 21 law and fails to comply with Local Patent Rule 121(c). See, e.g., Slot Speaker, 2017 WL 22 235049, at *6-7; Ironworks, 2017 WL 4573366, at *1-3. Accordingly, the court ORDER - 12 1 GRANTS Plaintiffs’ motion to strike the lists of references in section III of Defendants’ 2 invalidity contentions. 3 The accompanying claim charts are less obviously deficient. Defendants provide a 4 total of 14 claim charts to address anticipation and obviousness, with each chart relating 5 to a primary reference. Each chart consists of two columns: (1) on the left, each asserted 6 claim of each Patent is broken into discrete claim elements that occupy separate cells; and 7 (2) on the right, Defendants identify “[e]xemplary” disclosures in prior art that 8 correspond to each claim element. (See Invalidity Contentions at Charts A1-G2.) There 9 are two problems with this arrangement. First, Local Patent Rule 121(c) does not permit 10 the disclosure of merely “exemplary” combinations of prior art. Defendants must 11 disclose specific obviousness combinations. See Local Rules W.D. Wash. LPR 121(c). 12 Second, although the claim charts purport to assert obviousness combinations on a claim 13 element-by-claim element basis, the charts include so many potential combinations of 14 alleged prior art that they fail to reasonably apprise Plaintiffs of the obviousness 15 combinations on which Defendants intend to rely.5 16 5 17 18 19 20 21 22 In their reply, Plaintiffs provide arithmetic not present in their motion to emphasize this point. (See Reply at 3.) Plaintiffs argue that the references cited with respect to claim 1 of the ’496 Patent, as set forth in chart D-1 of Defendants’ proposed amended invalidity contentions, could be combined in “more than 480 total different iterations” for that claim alone. (Id.; see also Brunette Decl. ¶¶ 7-10.) According to Plaintiffs, “Defendants’ “14 charts across all asserted patent claims amount to over 66,000 potential combinations of references against specific patent claims.” (Reply at 3 (emphasis omitted).) Defendants move to strike these portions of Plaintiffs’ reply and Mr. Brunette’s declaration on the ground that “[t]he argument that there are too many combinations was never made in Plaintiffs’ opening papers, but it certainly could have been made then.” (Surreply at 1.) The court finds Defendants’ objection misplaced. Plaintiffs did argue in their motion that Defendants’ invalidity contentions “include any number of unidentified combinations”—albeit in the context of the lists of references—and asserted their calculations in direct response to Defendants’ argument that the claim charts “identify asserted specific ORDER - 13 1 The court acknowledges that an accused infringer is not required to “spell out in 2 exact detail every particular combination it intends to assert.” Slot Speaker, 2017 WL 3 235049, at *6 (quoting Fujifilm Corp. v. Motorola Mobility LLC, No. 12-cv-03587-WHP, 4 2015 WL 757575, at *28 (N.D. Cal. Feb. 20, 2015)). Under one line of authority, courts 5 have found that a defendant satisfies its obligation to disclose obviousness contentions, 6 even if its approach results in “‘billions of possible obviousness combinations,’” as long 7 as the defendant “reasonably specifies” the possible combinations of prior art references 8 that allegedly render the asserted claims obvious. Rambus, 2011 WL 13249391, at *5-6 9 (quoting Avago, 2007 WL 951818, at *4); see also Keithley v. The Homestore.com, Inc., 10 553 F. Supp. 2d 1148, 1150 (N.D. Cal. 2008). In those cases, the defendants organized 11 prior art references into groups and articulated an overarching theory of obviousness that 12 applied to “each and every possible combination[]” of prior art within the groups. Avago, 13 2007 WL 951818, at *4; Rambus, 2011 WL 13249391, at *5-6; Keithley, 553 F. Supp. 2d 14 at 1150. 15 Here, Defendants have not adopted a “grouping” approach that reasonably 16 apprises Plaintiffs of their obviousness contentions. Rather, Defendants have charted 17 various primary references in conjunction with multiple additional references per claim 18 element, giving rise to an unreasonably large assortment of potential combinations of 19 prior art untethered to any discernable theory or theories of obviousness. This approach 20 fails to satisfy the purpose of Local Patent Rule 121(b)—to put Plaintiffs on reasonable 21 22 combinations on a claim element-by-claim element basis.” (Resp. at 7.) The court thus DENIES Defendants’ motion. ORDER - 14 1 notice of the possible combinations of prior art references that allegedly render the 2 asserted claims obvious. See Local Rules W.D. Wash. LPR 121(c). “[T]o the extent that 3 [Defendants’] approach involves grouping of prior art, [Defendants] must explain which 4 prior art references fall into a particular group, as well as the theory of obviousness for 5 combinations from particular groups.” See Slot Speaker, 2017 WL 235049, at *7 6 (striking obviousness contentions where the defendant relied upon a primary reference 7 “in combination with the other charted prior art references,” without specifying whether 8 the defendant intended to rely upon “any, some, or all of the charted prior art 9 references”). 10 11 The court thus GRANTS Plaintiffs’ motion to strike Defendants’ obviousness contentions, with leave to amend consistent with the above discussion. 12 4. Specificity of Prior Art Claim Charts 13 Under Local Patent Rule 121(d), a party defending against a claim of infringement 14 must provide a chart for each item of alleged invalidating prior art that specifically 15 identifies where each element of each asserted claim of the patents-in-suit is found. 16 Local Rules W.D. Wash. LPR 121(d). Likewise, the court’s Standing Patent Order 17 requires “a chart that identifies where in each piece of prior art each element of each 18 asserted claim is found.” SPO at 2. Plaintiffs argue that Defendants’ claim charts fail to 19 satisfy these requirements. 20 Courts in the Northern District of California have concluded that the level of 21 specificity required by a substantially similar local patent rule is the same as that required 22 for disclosure of infringement contentions. “Broad or general disclosures are ORDER - 15 1 insufficient.” Slot Speaker, 2017 WL 235049, at *2 (internal quotation marks and 2 citation omitted); see also Largan Precision Co. Ltd. v. Genius Elec. Optical Co., No. 3 13-cv-02502-JD, 2012 WL 6882275, at *4 (N.D. Cal. Dec. 5, 2014) (“The requirement 4 that the invalidity contentions disclose whether each item of prior art anticipates each 5 asserted claim or renders it obvious would be a dead letter if parties could avoid it with 6 broad disclaimers.”). 7 To support their argument that Defendants’ claim charts lack the specificity 8 required by Local Patent Rule 121(d), Plaintiffs highlight chart D1’s disclosures 9 regarding the fourth limitation of claim 1 of the ’496 Patent. (Mot. at 11.) Defendants 10 11 12 13 14 15 identify the fourth element of claim 1 of the ’496 Patent as follows: [1.4] the stretch panel being resiliently elastic both in a direction between the top edge and the bottom edge and in a direction between the side edges, the stretch panel having a length when unstretched smaller than a length measured along the front portion between the top and bottom locations and a width when unstretched smaller than a width measured along the front portion between the side seams such that the front portion is gathered from side-to-side and top-to-bottom by the stretch panel and defines a three-dimensional pouch between the stretch panel and the front portion for receiving the wearer’s genitals and holding the wearer’s genitals while the garment is being worn. 16 (Invalidity Contentions, Chart D1 at 31-32.) 17 In locating this claim element in the asserted references, Defendants merely 18 reproduce large portions of, and figures from, the references, without stating how those 19 excerpts disclose each element of the limitation. (See id. at 31-48.) In fact, Defendants 20 copy and paste the very same portions of the references with respect to multiple elements 21 within the claim limitation. (Id. at 31-46 (repeating three times the same excerpted text 22 ORDER - 16 1 and figures from a reference, without indicating where each claim element is found).) 2 Defendants’ proposed amended chart D1 suffers the same deficiencies. Defendants 3 merely highlight portions of the excerpted references and add arrows pointing to specific 4 areas of the figures. This approach falls short of the obligation imposed by Local Patent 5 Rule 121(d). The court thus GRANTS Plaintiffs’ motion to strike the aforementioned portions 6 7 of chart D1 and all other portions of the claim charts that fail to identify where each claim 8 limitation may be found in the alleged prior art, with leave to amend consistent with the 9 principles discussed above.6 10 5. Leave to Amend 11 Plaintiffs argue that the court should deny Defendants leave to amend because 12 “[Defendants] ha[ve] already taken [their] own leave to do so (in the form of the 13 [Amended] Contentions), and ha[ve] provided proposed amended contentions that also 14 fail to comply with the [Local Patent Rules] and the [Standing Patent Order].” (Reply at 15 // 16 17 18 19 20 21 22 Plaintiffs also argue that, “because Defendants organized the Charts around groups of references (rather than a chart for each reference), Plaintiffs cannot discern what claim elements are found in a given reference without reviewing each of the seven Charts per patent.” (Mot. at 12.) Plaintiffs suggest that Local Patent Rule 121(d) requires that Defendants provide one chart per reference, in which Defendants identify where each element of each asserted claim is found in that particular reference. (Id.) Plaintiffs cite no support for that interpretation of the Local Patent Rules or similar rules in other districts (see generally id.), and the court declines to adopt it. Local Patent Rule 121(d) may envision the provision of reference-by-reference claim charts, but it does not expressly require that the “chart identifying where specifically in each alleged item of prior art each element of each asserted claim is found” be separate from any charts that disclose anticipation and obviousness contentions. See generally Local Rules W.D. Wash. LPR 121(d). 6 ORDER - 17 1 6.) According to Plaintiffs, granting leave to amend would only allow Defendants 2 “another bite at the apple” to correct its deficient contentions. (Id.) 3 The court concludes that leave to amend is appropriate here.7 First, the court 4 acknowledges that the Local Patent Rules impose a strict timeline on accused infringers’ 5 invalidity contentions. See Local Rules W.D. Wash. LPR 121 (providing that an accused 6 infringer must serve its invalidity contentions within 30 days of service upon it of the 7 plaintiff’s infringement contentions). Although that timeline does not excuse 8 non-compliance with the Rules’ substantive requirements, a party is better able to clarify 9 and streamline its invalidity contentions as the litigation progresses. Defendants should 10 be afforded an opportunity to do so. Moreover, this case is in its relatively early stages. 11 Expert witness reports are not due until the end of next month, discovery closes in three 12 months, and trial is some eight months away. (See Sched. Order (Dkt. # 22) at 2.) 13 Plaintiffs will not suffer undue prejudice if Defendants are granted leave to amend. 14 The court thus GRANTS Defendants leave to amend their invalidity contentions, 15 consistent with the discussion herein, and ORDERS Defendants to serve their newly 16 amended invalidity contentions on Plaintiffs within 30 days of the filing date of this 17 order. The court notes that, in their reply, Plaintiffs allege that Defendants added to their 18 proposed amended invalidity contentions additional, new references, which were not 19 specifically related to the deficiencies identified in Plaintiffs’ motion to strike. (Reply at 20 21 22 7 A party requesting leave to amend in response a motion to strike need not make the same showing of “good cause” that must support a motion to formally amend its contentions. Slot Speaker, 2017 WL 235049, at *9. ORDER - 18 1 3-4.) Should Defendants seek to add new material to their forthcoming amended 2 invalidity contentions, as opposed to clarifying their existing invalidity theories, they 3 must seek the court’s leave pursuant to Local Patent Rule 124. Further, in the event 4 Plaintiffs believe Defendants’ newly amended invalidity contentions remain deficient, 5 Plaintiffs must meet and confer with Defendants to attempt to resolve the issues before 6 filing any additional motions to strike. 7 8 9 IV. CONCLUSION For the foregoing reasons, the court GRANTS in part and DENIES in part Plaintiffs’ motion to strike Defendants’ invalidity contentions. (Dkt. # 33.) The court 10 further GRANTS Defendants leave to amend their invalidity contentions, consistent with 11 the discussion herein, within 30 days of the filing date of this order. 12 Dated this 15th day of July, 2019. 13 14 A 15 The Honorable James L. Robart U.S. District Court Judge 16 17 18 19 20 21 22 ORDER - 19
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