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Motion to Compel Granted Where Infringement Contentions Were Inadequate to Put Defendant on Notice of Infringement

In a recent case from the United States District Court for the Northern District of California, the district court granted a defendant’s motion to compel an interrogatory response where the infringement contentions were inadequate to put the defendant on notice of the alleged infringement. The infringement contentions relied on a number of screenshot that referred to a specific configuration file. The defendant argued that the screenshots alone failed to explain how the products as depicted allegedly met the limitations of the asserted claims and that the citations to the documents accompanying the infringement contentions also did not supply the missing information.

The defendant served an interrogatory seeking the missing information. The plaintiff refused to respond to any portion of the interrogatory, asserting that its amended infringement contentions contained screenshots that showed the products at each stage of the infringing processes and that the claim charts also contained a detailed narrative and citations to show the infringing processes. The defendant disagreed, arguing that neither the screenshots nor the narrative disclosed the particular configurations of the accused products and were meaningless without an understanding of the custom configuration of the accused products that were used to produce the screenshots.

The district court found that plaintiff’s infringement contentions were insufficient under both Fed.R.Civ.P. 26 and Local Patent Rule 3-1. “Forcing [defendant] to ‘guess’ as to what infringement [plaintiff] alleges by its screenshots, regardless of whether [plaintiff] provided sufficient detail as other infringement contentions, violates the principles of both Rule 26 and Pat. L.R. 3-1.” The district court also stated, citing Local Patent Rule 3-1(c), that “inasmuch as the accused product configurations and any additional end-user programming producing the screenshots are not specifically identified, the screenshots do not identify ‘specifically where each element of each asserted claim is found within each Accused Instrumentality.'” Finally, the district court found that the infringement contentions did not properly put the defendant on notice because they merely relied on screenshots that showed the result of the accused process but not the “specific allegedly infringing product configurations and additional end user programming.”

Plaintiff also asserted that the information regarding the screenshots was protected by the work-product of consulting experts or it was expert opinion that was requested prior to the deadline for the disclosure of expert reports. The district court rejected this argument as well, concluding that the defendant was not seeking expert information but rather plaintiff’s preliminary infringement contentions that specifically describe the theory of infringement so that the defendant can properly evaluate its defense.

Accordingly, the district court granted the motion to compel and ordered the plaintiff to respond to the interrogatory.

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The district court’s opinion once again highlights the importance of preliminary infringement contentions for both the plaintiff and the defendant. The plaintiff must be careful to put in enough data so that it complies with its obligations and fairly puts a defendant on notice of infringement. A defendant also can use the infringement contentions or an interrogatory to seek additional information from the plaintiff and the put the plaintiff to the test of showing its hand early in the case before much, if any, discovery has been conducted.

Vasudevan Software, Inc. v. International Business Machines Corporation, et al., Case No. C 09-05897 RS (PSG) (N.D. Cal. June 15, 2011)

The authors of are patent litigation 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