The Model Order benefits a patent owner more than a defendant. Patent owners maintain an advantage by waiting to just before trial to identify claims to a defendant. The Model Order does speed up this identification to the benefit of the defendant. But the tradeoff for limiting claims under the Model Order is a drastic reduction in prior art references available to a defendant.
At the ITC, In the Matter of Certain Coenzyme Q10 Products and Methods of Making Same (April 3, 2012), Judge Rogers (337-TA-790) denied Respondents' motion to supplement their invalidity contentions as to a single prior art reference. Respondents' requested supplementation to add the Kanazawa article based on the explanation that the article
was not uncovered until ... counsel ... reviewed the prosecution history of U.S. Patent No. 5,011,858.
In denying the requested supplement for the Kanazawa prior art for "good cause" under Ground Rule 5, governing notice of prior art, Judge Rogers repeated his guidance provided at an earlier hearing concerning Ground Rule 5:
[Ground] Rule 5 talks about notices of prior art. There is a date in the procedural schedule for filing the notice of prior art. That's a not later than date, and if you are late doing it, and you haven't filed it timely, then proof of the matters related to that prior art that's not timely will not be allowed in evidence at the trial, unless you show good cause by a written motion, and the fact that your expert couldn't find the references is not adequate for good cause.
(Order at 2). Judge Rogers reasoned that he warned the Respondents about this situation at the preliminary conference, and therefore denied the proposed amendment to their notices of prior art.
Takeaways - Judge Rogers focused on the fact that identifying prior art after the notice date would only be permitted for good cause, and failure to locate a reference does not constitute good cause. It was also noted that the Kanazawa prior art was a publicly-available reference. With such tight time frames in the ITC, it appears there was little the Respondents could due once the notice period expired, except identify some other rationale to support the "good cause" requirement, different from explaining why the reference could not be found earlier.
We recently completed an update to our list of local patent rules. You can now find a list of each jurisdiction that provides patent local rules, a corresponding link to the patent rules or PDF, and excerpts of the specific rules concerning invalidity contentions and invalidity charts. Take a look and let us know what you think. We still need to add a couple of additional jurisdictions.
In Oy Ajat, Ltd. v. Vatech America, Inc. [unpublished] (March 29, 2012), Judge Arpert (District of New Jersey) granted Defendant's motions to stay the case pending reexamination and also to supplement its invalidity contentions based on prior art in the reexamination request. Relying on Patent Local Rule 3-7, Defendant requested a supplement to its prior art disclosures, arguing:
the two new prior art references cited in [its] proposed supplemental contentions became truly material...to the issue of invalidity of the patents-in-suit...[for the first time] on August 23, 2011 when [Plaintiff]...made arguments in [the] reexamination proceedings to avoid invalidity findings by the assigned examiner. [Order at 18]
In a lengthy evaluation of the parties' arguments, the Court considered the prevailing "good cause" factors in evaluating the proposed supplements:
- the reason for the delay and whether a party has been diligent;
- the importance of what is to be excluded;
- the danger of unfair prejudice; and
- the availability of a continuance and the potential impact of a delay on judicial proceedings.
(Order at 36).
The Court ultimately granted the stay, noting that the reexamination had reached ACP (Action Closing Prosecution). With respect to Defendant's supplemental invalidity contentions, the Court explained:
the application itself comes approximately five (5) months after Plaintiff’s submissions to the USPTO, the Court finds that permitting Defendant to serve supplemental Invalidity Contentions at this time will not unduly prejudice Plaintiff given that Defendant presented the USPTO examiner and Plaintiff with the same additional prior art references in September 2011 ..., given that VAK’s recently filed Answer “asserted invalidity of the [patents-in-suit] on all art in the reexamination proceeding including the proposed supplemental prior art” ..., and given the imposition of a stay as set forth above. While noting that the parties may incur additional legal expenses, .... Fact discovery has yet to be completed and, although Markman briefs have been submitted, no hearing has been scheduled such that any additional discovery and/or revisions to Markman briefs may proceed when the stay is lifted. [Order at 40-41]
We earlier commented on a different result where the Court (NDCA) determined that a two month delay in seeking leave to supplement invalidity contentions precluded the request to supplement. In contrast, this New Jersey District Court decision was a bit surprising because there does not seem to be a sufficient justification by the Defendant in requesting a supplement when the relied on prior art was identified in a reexamination request filed months earlier. The Court did not really explain the first "good cause" factor - reason for the delay and diligence, but rather relied on lack of prejudice to the Plaintiff. See Order at 37-41. Defendant's main argument to explain away the delay was that Plaintiff
made arguments in [the] reexamination proceedings to avoid invalidity findings by the assigned examiner. [Order at 18]
This justification seems a bit weak. The art was known at least as of the time of the reexamination filing. Plaintiff's arguments in reexamination don't really explain why the request to supplement was delayed for four to five months. The prior art was either relevant, or it wasn't relevant, despite Plaintiff's reexamination arguments.
Takeaways - this is a bit perplexing. Defendant could have neutralized the delay issue if it would have filed a request to supplement its contentions when it was was drafting the reexamination request, or when it ultimately filed the reexamination request. This seemed to be a close call and the Court's decision is understandable - let the PTO decide the validity issues by imposing a stay. But if the PTO and BPAI are to decide the validity issues, why was it important to allow the supplement when defendant's delay/diligence justification was so thin?
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.
In Nomadix, Inc. v. Hewlett-Packard Company et al. (March 22, 2012), Judge Pregerson (Central District of California) denied defendants' request to supplement their invalidity contentions. The Court noted that for amending prior art disclosures, good cause determination factors include:
the relevance of the newly-discovered prior art, whether the request to amend is motivated by gamesmanship, the difficulty of locating the prior art, and whether the opposing party will be prejudiced by the amendment.
(quoting Acco Brands, 2008 WL 2168379, at *1 (N.D. Cal. May 22, 2008)).
The decision appears to suggest that the new prior art (the Vos article) is relevant and that the amendment request is not motivated by gamesmanship. Although these factors may have favored the defendants, the Court seemed troubled that the defendants did not identify the Vos article sooner, noting that:
Defendants fail to adequately explain their delay in discovering the Vos article, when it was one of only eleven references cited in the 1997 SPINACH paper upon which they based their initial invalidity contentions. (p. 7).
As for prejudice to Plaintiff Nomadix, the supplemental contentions extend beyond the Vos article.
Defendants argue that there is no prejudice here, because they are not shifting or adding theories, but simply developing "the same theory set forth in the preliminary invalidity contentions in July 2010 and first supplemental invalidity contentions in July 2011." (Reply at 8.) Specifically, those contentions alleged that the '118 Patent and the SPINACH system rendered invalid Novadix's '894 and '716 Patents, respectively. As Nomadix explains, however, Defendants seek to go well beyond developing these prior art theories. Defendants now contend that the '118 Patent and SPINACH system invalidate several additional Nomadix patents. Likewise, Defendants contend that three other patents are invalidated by a new reference - the Vos article. In short, Defendants now theorize that prior art invalidates seven Nomadix patents, instead of only two. Nomadix therefore reasonably argues that responding to these new contentions would require additional fact discovery, which is now closed.
Takeaways - allege invalidity against all asserted patents for each of your prior art references in your preliminary invalidity contentions, and, be sure to consider references to other prior art in your main prior documents because that may be a factor against you when requesting an invalidity contention supplement.
Has this happened in your patent litigation practice before? Discovery is ongoing and you're working on finalizing your invalidity contentions against 20-30 claims from 2 patents with your invalidity expert. Your case is well-organized, you've refined your invalidity positions, and selected the most relevant disclosures for your 102 and 103 contentions.
Everything is, for the most part, under control. In litigation though, there's a reason why we expect the unexpected. Suppose now that the plaintiff-patent owner attempts to seize an advantage and asserts 2 more patents against your client adding another 20 claims into the case. If you weren't using PatDek, you would scramble a team of associates to extract portions of your existing invalidity contentions/charts and pull together another 50-60 charts against the newly asserted claims.
If you were using PatDek for your case, the solution is much simpler.
Step one - type in each patent number to add the newly asserted patents to your case.
Step two - link your existing concepts to the new claims of interest for each newly asserted patent.
Step three - select the claims and references you want in your charts.
It really was that simple for one of our clients. In a couple of hours, the client had added in the new patents, linked existing concepts to 20 or so claims, and was generating invalidity charts against those new claims. The new patent claims were closely related to the other claims in the case so no additional concepts were needed, nor was a re-review of the prior art for new concepts necessary. If new concepts were required, the concepts could be added, linked to the relevant claim limitations, and a focused review of the prior art could be done looking just for the new concept(s).
PatDek can adapt to changes in your case. Are you really prepared if you're not using PatDek?
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.
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.
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.
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:
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.
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.
Let's suppose that you have just been retained to represent a client to defend a patent litigation in ED Texas. For sake of simplicity, it's a single defendant case. A scheduling order is later entered and invalidity contentions are due in about 3 months from today. To further simplify the discussion, let's assume there's only 1 asserted patent having 4 independent claims and 26 dependent claims (30 total claims). In 45 days the plaintiff will identify the asserted claims, and 45 days later invalidity contentions are due. What's the plan?Let's assume that you have about 20 prior art references. These references may represent a distilled set of references received from a commissioned prior art search, maybe the references come from your own search, or maybe the references were delivered to you from the client. The point is, you have some prior art that needs to be analyzed, you're not yet sure which claims will be asserted, but you need to start reviewing and analyzing the prior art to determine if this art will be of any use in the litigation.
One approach is to chart each of the 20 references against the 4 independent claims and wait for the set of asserted claims to be identified. Another approach is to focus on the most narrow two or three asserted claims of the set of 30 claims and just chart these narrow claims (if the narrow claim is invalid, then the broader claims will be captured as well).
There are other approaches, but either of these approaches makes sense as a first cut at analysis. Your case will be well-positioned If each reference individually meet the limitations of the target claims. Most of the time, however, this is not the case. Each reference is likely to have disclosure gaps for specific claim limitations. In the end, you'll end up with 20 charts (one for each reference) against a set of claims (four independent claims or the three narrow claims) with blank rows for certain features/limitations. In other words, not a single reference teaches each limitation of any one claim. A good start, but your team is going to have to determine which references are properly combinable for section 103 contentions or you're going to need additional references.
Assume that the 20 references are already the best references available. The difficulty now is in identifying all possible two and three way combinations for this set of 20 references to support obviousness contentions. In another post we'll explore the math of the combination dilemma, but for now consider that the total number of two-way combinations for 20 references (order not important, no repetitions) is 190 combinations. For three-way combinations of 20 references, there are 1,140 possible combinations. Of course, not all combinations will work because references A and B together may not disclose each limitation of claim X.
We've solved this problem for you with PatDek. PatDek identifies each single reference, and the two and three way combinations of references, that teach each claim limitation for any claim of interest. More importantly, the type of analysis your team performed to create your charts (against the target claims) is the same type of work product that PatDek receives from your review team.
The above example described a straightforward, single patent, small set of claims situation. How would you approach the more difficult situation of 3 patents, a potential claim set of 150 claims, in a joint defense situation of three defendants, each represented by different law firms under the same three month window? We've thought about that too and have a solution.
Here's a snapshot showing how a case-specific database can be configured to track features for claim limitations. Instead of looking at each claim, the database can be configured to look at specific aspects of a claim. This allows a review team to extract features from a prior art reference during the analysis phase, and also allows changes to be made for a reference, later when needed, directed to only portions of claim.
This approach may seem non-traditional. We believe that this approach provides a solid foundation for the case team as the litigation advances from preliminary assessment, through preliminary contentions, onto fact discovery/contentions, and then as it moves to expert discovery and dispositive motions. The case is continually focused through the use of a database and changes to the data set. We can help you understand this revised work flow. Hopefully you'll consider how these different ideas can assist you when preparing your claim. You can view your evolving understanding of the target claims in different ways - claim limitation mapping is just one alternative.