United States: If You Amend Claims In A Post Grant Proceeding, Don't Forget To Supplement Infringement Contentions In Parallel Litigation

Last Updated: April 29 2016
Article by Gerard M. Donovan

The Federal Circuit's recent decision in Target Training International v. Extended Disc North America tells the cautionary tale of what can happen to a plaintiff who successfully navigates a post grant challenge by amending claims but does not promptly amend its infringement contentions in parallel litigation.

In this case, Target Training filed an infringement action against Extended Disc in the Southern District of Texas. Per the local rules, Target Training provided preliminary infringement contentions in 2011 alleging infringement of claims 1, 2, and 5-11. The PTO then instituted a reexamination of the asserted patent. The district court litigation was subsequently stayed. Fast forward a few years, and Target Training emerged from the reexamination with original claims 1-11 canceled but with new claims 12-41 confirmed as patentable. The district court reopened the litigation in January 2015. Less than two weeks later, Extended Disc moved for summary judgment of noninfringement and invalidity and, alternatively, moved to dismiss the action as moot because all asserted claims were canceled. A few days later, Target Training filed a notice with the court informing it of the reexamination certificate, stating that thirty new claims were added during the reexamination, and requesting a scheduling conference to discuss, among other things, contentions. The court never responded to Target Training's request. In June 2015, the court agreed with Extended Disc that Target Training was bound by its preliminary infringement contentions unless it sought leave to amend its contentions. Accordingly, the court granted Extended Disc's motion to dismiss the case as moot.

The question on appeal was whether it was appropriate for the district court to dismiss the case when Target Training failed to amend its infringement contentions to assert infringement of any of the thirty newly added claims. The Federal Circuit analyzed the record and found that Target Training failed to assert the newly added claims, despite opportunities to do so. Accordingly, it affirmed the district court's dismissal of the case as moot.

Post grant proceedings are most often used in parallel with litigation, and the lesson here is that practitioners on both sides need to keep strategy for both district court litigation and Patent Office proceedings in mind at all times. Both parties knew when the reexamination was wrapping up, and Extended Disc was ready with both substantive and procedural motions to end the litigation just weeks after the stay was lifted. If Target Training had won the race to the courthouse by moving to supplement its preliminary infringement contentions to assert the new claims as soon as the stay was lifted, it likely could have avoided dismissal.

This article is presented for informational purposes only and is not intended to constitute legal advice.

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