United States: You Don’t Need to Hire Sherlock Holmes to Conduct a Meaningful Investigation, but You Should at Least Inspect an Accused Infringer’s Website

Last Updated: October 8 2014
Article by Monte Cooper and Daniel Justice

Order Denying Plaintiff's Motion to Amend Infringement Contentions Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Case No. 12-cv-03844-JST

Both Shakespeare's Henry IV and Sherlock Holmes famously uttered "The game is afoot!" Each had a slightly different meaning when doing so, but when both famous characters exclaimed that now iconic statement, they meant that some sort of hunt was still in progress – and in Sherlock Holmes' case, that was a hunt for the truth. Interpreting the Northern District's Patent Local Rules in Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Judge Jon S. Tigar might have elected to modify the Bard's and Sir Arthur Conan Doyle's literary monikers to read "The game is afoot, as long as you remain diligent!" Perhaps not as elegant, but from a legal standpoint it's quite accurate. And Sherlock Holmes, at least, would likely applaud such attempts to hold Plaintiffs to their Local Rule obligations—indeed, he was on record in The Sign of the Four as indicating he never made "exceptions," since "exceptions disprove the rule."

As any local patent attorney knows, the Northern District's Patent Local Rules require parties to set forth their preliminary infringement contentions early in litigation. A party can later move to amend those contentions, but only upon a timely showing of good cause, such as a recent discovery of prior art or nonpublic information that was not previously discovered despite an earlier diligent search. It was this last requirement that Judge Tigar ruled plaintiff Icon-IP Pty Ltd. had flaunted when it attempted such an amendment.

In Icon-IP Pty Ltd. v. Specialized Bicycle Components, Inc., Icon originally alleged that 33 of defendant Specialized's bicycle seats infringed two of its patents. Icon later moved to add 53 additional seats to its infringement contentions. The court refused all but four of the proposed amendments on the ground that Icon could have discovered relevant information about the seats and included them in its contentions "by conducting a meaningful investigation of Specialized's website."

Over a year later, Icon once again moved to amend its contentions, this time to accuse 12 other bicycle seats. Icon argued it was diligent in accusing these new seats because it was diligent in serving discovery requests pertaining to the seats. It argued that Specialized impermissibly delayed responding to the requests, and that this delay prevented Icon from earlier amending its contentions. Specialized responded that all of the relevant information about the seats had been available on its website for over a year. In fact, Specialized pointed out that Icon's counsel admitted to utilizing Specialized's website to obtain information about some of the seats. Specialized also responded that it had not failed to produce discovery as Icon alleged; rather, it had objected to Icon's requests to produce documents regarding seat models that Icon had not accused of infringing, and had alerted Icon to the availability of the requested information on its website.

Given these facts, Judge Tigar concluded that Icon's entire diligence argument hinged on the notion that Specialized's impermissible delay in responding to discovery requests prevented it from conducting its infringement analysis sooner. He found this argument unpersuasive for two reasons. First, Icon did not explain why it never moved to compel discovery if the requested documents were in fact necessary for it to perform an infringement analysis. Second, and more importantly, Icon did not dispute that all of the necessary information had been available on Specialized's website for over a year. Thus, he found that Icon was not diligent in seeking an amendment, and consequently denied the motion.

While the Patent Local Rules don't require use of a magnifying glass like that wielded by Sherlock Holmes, they do require a diligent and meaningful pre-infringement contention investigation. Where's a good place to start? Perhaps try the accused infringer's website.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
23 Jan 2019, Speaking Engagement, New York, United States

New York partner Rich Martinelli will be a featured panelist during the Society of Physician Engineers' event, "Intellectual Property Law & Tax Credits for Life Science Companies."

29 Jan 2019, Speaking Engagement, New York, United States

Please join Orrick partner Jay Jurata at this year's Joint NGMN and ITU Conference on January 29-30 in Geneva, Switzerland.

27 Feb 2019, Conference, Las Vegas, United States

Partner John Narducci will be discussing The Impact of the Tax Reform Act on Valuations at ABI’s Valcon 2019 Conference.

 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions