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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.

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.