American Video Graphics, L.P. v.Electronic Arts, Inc., 359 F.Supp.2d 558 (E.D.Tex., 2005) (NO. 6:04-CV-398)
Judge: Leonard Davis
Holding: Defendants' Motion to Compel Supplemental Disclosures Pursuant to Patent Rule 3-1(c) GRANTED in part and DENIED in part.
This is a patent case in which the plaintiff claims that certain video games infringe its patents. Defendants filed this motion to compel the plaintiff to supplement its preliminary infringement disclosures pursuant to Local Patent Rule 3-1(c) (The Patent Rules are available under "Local Rules" as "Appendix M" on the Eastern District of Texas's website at http://www.txed.uscourts.gov).
Defendants contend that AVG's 3-1(c) chart is not specific enough to put them on notice as to how, or which aspects of, their products infringe AVG's patent. The parties agreed that AVG was limited in its ability to identify how the games infringe without the source code. Where the parties disagreed was in whether AVG should be required to provide "screen shots" to show how the games infringe. AVG claimed that doing so would reveal attorney work product.
Judge Davis' opinion, which memorialized his ruling from the bench, provided some useful guidance for patent practitioners, especially in software cases. He reiterated that "the Patent Rules are designed to streamline the discovery process" and that "[t]hey provide structure to discovery and enable the parties to move efficiently toward claim construction and the eventual resolution of their dispute. The Patent Rules demonstrate high expectations as to plaintiffs' preparedness before bringing suit, requiring plaintiffs to disclose their preliminary infringement contentions before discovery has even begun."
But "[s]oftware cases present unique challenges for the parties and the courts because, prior to discovery, plaintiffs usually only have access to the manifestation of the defendants' allegedly infringing source code and not the code itself. . . . until plaintiffs have access to [the source code], plaintiffs are typically unable to give highly specified infringement contentions. . . . In these situations, through Rules 3-6 and 3-7, the Patent Rules recognize the preliminary nature of plaintiff's preliminary contentions accommodate plaintiffs' need to supplement their initial contentions."
Accordingly, Judge Davis found that AVG had complied with its obligations under PR 3-1(c) to the best of its ability but recognized that this still fell short of the specificity the defendants needed. But, noting that the parties' agreements for providing the source code for review were nearly complete, the Court ordered AVG to supplement its disclosures to include specific references to the source code within 30 days of the defendants depositing the code into escrow. "The parties have demonstrated their ability to work together," Judge Davis concluded, "and the Court trusts they will continue to do so."