Patent Lawyer Blog
The defendant filed a motion to strike part of the plaintiff’s initial infringement contentions, focusing on infringement under the doctrine of equivalents and indirect infringement. The defendant asserted that the Local Patent Rules required an explanation of the infringement and plaintiff’s contentions provided none.
The district court noted that Local Patent Rule 2.2(d) requires that for “any claim under the doctrine of equivalents, the Initial Infringement Contentions must include an explanation of each function, way, and result that is equivalent and why any differences are not substantial.”
The plaintiff’s (“FFT”) initial infringement contention on literal infringement and infringement under the doctrine of equivalents stated: “FFT presently contends that the Navistar Accused Instrumentalities literally infringe the asserted claim of the ‘361 Patent. Nevertheless, with respect to any claim element or limitation that may be found not to be literally embodied in the Accused instrumentalities, FFT contends in the alternative that the Accused Instrumentalities embody such claim elements or limitations under the doctrine of equivalents and that any claim element of limitation not found to be literally met is equivalently met because any difference between the claim element or limitation and the Accused Instrumentalities is not a substantial difference. Accordingly, FFT contends that any asserted claim not found to be embodied literally is nevertheless embodied by the Accused Instrumentalities under the doctrine of equivalents.”
After reviewing this contention, the district court found no support for the infringement allegation. “FFT’s contention provides no explanation as to why this is so; nor does it explain why any differences in the accused products are not substantial. As a result, it is insufficient under LPR 2.2(d).”
The district court then turned to the indirect infringement contention. Local Patent Rule 2.2(e) requires a plaintiff to provide, “for each claim that is alleged to have been indirectly infringed, an identification of any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement.” FFT’s contention on direct and indirect infringement stated: “For the reasons explained with respect to the accused part that is the subject of the ESI Report, FFT presently contends that Navistar sourced parts from at least [REDACTED] in a way that induced infringement of the ‘361 Patent.”
The district court then concluded that “[t]he attached report does not mention anyone other than Navistar and does not describe any acts by Navistar. Although the contention itself references ‘sourcing,’ FFT has not described the ‘way’ in which Navistar induced infringement.”
As a result, the district court struck these parts of the infringement contentions but did permit the plaintiff 21 days to attempt to amend to include additional information that would satisfy the local patent rules.
Fatigue Fracture Technology LLC v. Navistar, Inc., Case No. 1:15-cv-05667 (N.D. Ill. Oct. 17, 2016)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.