Court Strikes Infringement Contentions for Adding New Products and Then Strikes Back Door Attempt to Include Stricken Products in the Expert Report

September 3, 2012

In this patent infringement action between Eon Corp. ("Eon") and Alcatel-Lucent ("ALU"), among others, Eon served patent infringement contentions, which were repeatedly challenged by ALU and other defendants. As part of this process, Eon filed a further amended complaint against ALU alleging indirect infringement. In this amended complaint, ALU did not include any products by name. Eon subsequently filed a motion seeking leave to amend its infringement contentions against ALU to include seventy-six products, seventy-two of which were not included in its initial infringement contentions.

When ALU moved to strike these contentions, the court was not persuaded that the original proposed infringement contentions satisfied Local Patent Rule 3-1 because although they named infringing networks they did not show how ALU's accused products were used in those particular networks. As a result, the court ordered Eon to modify its infringement contentions to show how particular ALU products were used in an infringing network. Eon subsequently served amended infringement contentions against ALU pursuant to the court's order, which included more than twenty new ALU products that were not disclosed in the prior amended infringement contentions. The court then ordered the removal of the new ALU products, which Eon did a few months later.

Eon then served an expert report from Dr. David Lyon (the "Lyon Report"), which described Eon's inducement allegations against ALU and included products the court previously ordered Eon to remove from its infringement contentions. ALU moved to strike the portions of the report that referred to the previously excluded products.

As explained by the court, the parties had conflicting view of the motion: "ALU argues that Eon's attempt to include two of the excluded products as a basis for Dr. Lyon's infringement opinion is in clear violation of the Court's prior Order, the parties' agreement, and the Local Patent Rules. Eon counters that Dr. Lyon uses these products as evidence of ALU's inducement of the alleged infringing network rather than as part of a theory of infringement. Further, Eon argues that its initial disclosure of ALU's UMA Solution, the larger system within which the two component parts at issue are contained, satisfies the requirements of P.R. 3-1, such that Eon was not required to compile component details in its inducement contentions."

In ruling on the motion, the court noted that "[a]lthough P.R. 3-1 does not require disclosure of evidence, Realtime Data, 2009 WL 2590101, at *5, it does require disclosure of the essential components of an alleged infringing system, so as to allow a defendant to 'connect the dots' of an infringement allegation, effectively serving a notice function, Eon argues that its Original Complaint and direct infringement contentions, coupled with its identification of ALU as an indirect infringer who supplies component parts to the networks, are enough to satisfy P.R. 3-1 notice requirements. However, because a plaintiff cannot succeed on an inducement claim without identifying an underlying act of direct infringement, a plaintiff must provide sufficient information to put the alleged inducer on notice as to the underlying direct infringement. See In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1333 (Fed. Cir. 2012) (noting that 'liability for indirect infringement requires direct infringement')."

The court then rejected Eon's very general picture of infringement: "In relevant part, Eon offers a very general picture of infringement, listing 'every product that [ALU] sells or offers to sell...for use in their Networks' in its infringement contentions. EON'S RESPONSE TO ALU'S MOTION TO STRIKE (Doc. No. 926, at 5). Eon's broad characterization of its inducement theory against ALU in its infringement contentions cannot overcome its failure to precisely identify the components ALU provides to the infringing network. Simply accusing a large overhead system and all products supplied by a particular entity for use in that system is not enough to comply with P.R. 3-1; a party must include the relevant component parts of its direct infringement theory. If P.R. 3-1 were interpreted as Eon asserts, ALU would be left to guess the particular components ALU supplies that are part of the directly infringing network."

The court also rejected Eon's argument that it could include the new products in the expert report as evidence of infringement: "Further, the Court disagrees with Eon's argument that the products art issue could be reasserted as evidence of infringement through the Lyon Report. These components are not simply "evidence," but rather integral pieces of Eon's direct infringement allegations. Therefore, the 1000 Wireless Network Controller and the 5060 Wireless Call Server should have been timely disclosed pursuant to P.R. 3-1. In sum, the Court has already ordered removal of the 1000 Wireless Network Controller and the 5060 Wireless Call Server from Eon's amended contentions primarily due to Eon's failure to show good cause for their inclusion. Thereafter, Eon failed to seek leave to include these products as allegedly infringing components pursuant to P.R. 3-6 [2]. As discussed above, Eon's attempt to now include these products as evidence of inducement violates not only P.R. 3-1, but also the Court's prior Order."

Accordingly, the court granted ALU's motion to strike the products from the expert report.


Eon Corp. IP Holdings, LLC v. T-Mobile USA, Inc., et al., Case No. 6:10-CV-379 LED-JDL

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.