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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.