United States: Homing In On Precision In Infringement Theories

Discovery Order, Reason Bradley v. Applied Marine Systems, LLC, Case No. 13-cv-03941 (Magistrate Judge Corley)

It's a familiar struggle.  A patent plaintiff sees the mandatory infringement contentions required by Patent Local Rule 3-1 as a mere blip on the litigation radar to be supplemented following discovery.  The defendant, meanwhile, believes that plaintiff's case will implode if subjected to greater scrutiny, and refuses to provide discovery until the plaintiff's initial infringement contentions are supplemented so as to spell a credible (from the defendant's perspective, of course) theory of infringement.  In this recent discovery battle, at least, Magistrate Judge Corley sunk the defendant's theory that the plaintiff's contentions were inadequate, and permitted discovery to proceed.  However, she also cautioned the plaintiff that it could not engage in a "Hunt for Red October" discovery expedition, and wait until a later date in order try to amend his  contentions to spell out additional theories of infringement.

In the underlying action, the plaintiff Reason Bradley had previously amended his original infringement contentions in response to discovery objections to from defendant Applied Marine Systems, LLC ("AMS").  Specifically, AMS had stated it would not provide any discovery until Bradley first explained with greater detail why AMS's mounted sonar systems for boat craft supposedly infringed the patent-in-suit.  After receiving the amended contentions, AMS refused to withdraw this objection or provide discovery. AMS instead sought a protective order permitting it not to respond to Bradley's discovery requests until Bradley further amended his infringement contentions to provide greater specificity as to where certain limitations from the patent claims allegedly were found in the accused products.  AMS relied upon the language of Patent Local Rule 3-1(c) requiring the patentee to identify "specifically where" each limitation is found in the accused instrumentality.  Bradley's amended contentions, AMS argued, continued to be deficient in not identifying "specifically where" four particular limitations were found.  Meanwhile, Bradley asked the Court to rule that his contentions were sufficient under the Patent Local Rules.

Magistrate Judge Corley sided with Bradley and denied AMS's motion for a protective order.  She found that the degree of specificity required by Patent Local Rule 3-1 is that "sufficient to provide reasonable notice to the defendant why the plaintiff believes it has a reasonable chance of proving infringement."  Her detailed analysis suggests that she was able to understand Bradley's infringement theories, and she rejected AMS's arguments that Bradley had not explained or identified certain claim terms like "Z direction" and "pitch adjustment."

Not everything was in Bradley's favor, though.  Magistrate Judge Corley observed that Bradley had sufficiently alleged that the accused products practiced a certain limitation in one of only two possible ways.  Because Patent Local Rule 3-6 requires "good cause" for amendments to infringement contentions, she reminded Bradley that he could not simply "reserve his right" to amend his infringement contentions after discovery to claim the alternative way of practicing the limitation.  In addition, because Bradley's complaint did not include a claim for inducement of infringement, Magistrate Judge Corley found that statements in the contentions about AMS's inducement and direct infringement by AMS's customers were "superfluous," and therefore presumably not actionable.

Much like the mystery surrounding Russian Captain Markos Ramius' uncertain goals in the Hunt for Red October, plaintiffs and defendants undoubtedly will continue to engage in their own tactical games aimed at testing the strength of theories of infringement.  Magistrate Judge Corley's recent Order offers some sense of whether such theories will sink or sail in her courtroom.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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