In Intellectual Ventures I LLC v. AT&T Mobility LLC et al., C.A. No. 13-1668-LPS (Feb. 14, 2017), Chief Judge Stark decided the defendants’ motions to strike portions of the plaintiff’s infringement contentions, granting the motion as applied to the plaintiff’s final infringement contentions and doctrine of equivalents (“DOE”) contentions for the ‘248 patent, but denying the motion with respect to the plaintiff’s DOE contentions and infringement theory for the ‘831 patent. Chief Judge Stark additionally granted the defendants’ motion to strike portions of the expert report of Dr. Moon (the plaintiff’s expert).
When addressing the defendants’ motion to strike invalidity contentions and deciding whether to strike “potentially critical evidence,” the Court applied the Pennypack factors to determine whether the plaintiff’s failure to disclose was substantially justified or harmless under the particular circumstances. In considering the defendants’ argument that the plaintiff’s final infringement contentions for the ‘248 patent failed to address the Court’s construction of the term “application-aware” by leaving out any reference to the phrase “layer 7” and instead including the plaintiff’s original proposed construction that the Court expressly rejected, the Court held that the plaintiff’s refusal to apply the Court’s claim construction to its infringement contentions was willful and “neither substantially justified nor harmless.” Despite the plaintiff’s argument that its infringement contentions “account for the Court’s construction,” providing the defendants with adequate notice of the plaintiff’s literal infringement theory, the Court agreed with the defendants because the contentions failed to provide notice of “how the accused products allegedly meet the application-aware limitation.” As such, the Court granted the defendants’ motion to strike the “legally deficient and untimely-served contentions” for the ‘248 patent. The Court noted that it would grant the defendants’ motion even if such a ruling subsequently led to a grant of summary judgment, noting that the plaintiff had always been on notice of the infringement contention deadline and court procedures for resolving disputes.
Under the same theory, the Court also granted the defendants’ motion to strike the DOE contentions for the ‘248 patent, as the plaintiff relied on its literal infringement contentions as the basis for its DOE contentions. Based on his finding regarding the plaintiff’s literal contentions, Chief Judge Stark held that the plaintiff failed to identify an equivalent for the application-aware limitation under the same theory. In contrast, with respect to the ‘831 patent, the Court denied the defendants’ motion to strike the plaintiff’s DOE contentions. Although the defendants alleged that the plaintiff’s DOE contentions for the ‘831 patent failed to “include an identification of the ‘packets’ required by the claims,” the Court agreed with the plaintiff that its contentions provided adequate notice of its DOE theory by identifying what it contends are “packets” and how a “discrete number” of the packets are interleaved together. The Court also agreed with the plaintiff that its infringement theory for the term “single drop-out characteristics” should not be stricken, as it was contained in the plaintiff’s timely final infringement contentions. Although the defendants alleged that the infringement theory was not disclosed until two weeks before the close of fact discovery, the plaintiff disputed the defendants’ claim that they would be prejudiced if the plaintiff was allowed to pursue the new theory, noting that changes in the final infringement contentions were properly added in response to the Court’s claim construction order.
The defendants further argued that the Court should strike portions of Dr. Moon’s expert report that attempted to assert a new infringement theory relating to claim 1 of the ‘248 patent for the first time after the deadline for infringement contentions and the close of fact discovery. Despite the plaintiff’s argument that the theory was previously disclosed in its initial infringement contentions as applied to claim 2 of the ‘248 patent, the Court held that the infringement theory provided in Dr. Moon’s report was a new theory with respect to claim 1. Applying the Pennypack factors, the Court ultimately held that the defendants’ motion should be granted and portions of Dr. Moon’s report should be stricken.
Key Points: The Court will carefully review motions to strike and assess any prejudice prior to striking expert reports or infringement contentions.