Judge: Don Bush
Holding: Plaintiff's Patent Infringement Contentions STRICKEN; Case subsequently dismissed
The old Saturn V moon rocket was capped with a “booster protective cover” and “launch escape tower”, which covered the command module which contained the astronauts at launch. In the event of an emergency early in the launch (say the booster explodes on the pad) the purpose of the tower jet was to lift the command module up and away high enough that the parachutes could work and the spacecraft could safely land in the water just off the Florida coast. See Launch Escape System for more details on this fascinating part of the Saturn V rocket - it's my 4 year old twins' favorite part (and I'm not kidding). Readers who saw the Ron Howard movie Apollo 13 will remember this – it’s the “abort” handle Tom Hanks was looking at just after launch – if anything had gone wrong he would have pulled it – when the need for it passed the commander hits the “tower jettison” switch and the tower takes off with the boost protective cover attached, leaving the command module in place as the Saturn V heads towards orbit. (Can’t tell I’m a NASA junkie can you? Here's a picture of the BPC and LES on what would have been Apollo 18, now only display at NASA in Houston - we took the boys there spring break).
So what does this have to do with patent cases? Well, I usually don’t post on unreported opinions (note: this case was reported the week after I posted on it), but this one from Judge Bush was pretty compelling reading, and a good illustration of what happens to plaintiffs who file in the Eastern District without being ready for the requirements of the “rocket docket” and thus who need to pull the "abort" handle to get out of the docket (I could probably come up with a worse metaphor if I really tried, but let's not go there - this is what you get when the defendant was a contractor on the Apollo project).
In this patent case the defendants had been complaining of the adequacy of the plaintiffs’ patent infringement contentions (incidentally, Judge Bush’s use of this term in the wake of the elimination of the word “preliminary” from the local patent rules last fall allows parties to keep using the familiar terms “PICs” instead of “ICs”). Anyway, he had ordered the plaintiffs to revise their PICs as to the 62 representative products identified – but they only provided them as to 9 products, and identified none of defendant Rockwell Collins, Inc’s products, which was the subject of this motion. (Incidentally, while Rockwell Collins was a major contractor for the Apollo program – its predecessor companies built the lunar module and some of the communications systems - I don’t think it had anything to do with the BPC or LES).
Judge Bush concluded that “Plaintiffs failed to perform the proper pre-suit investigation required by this Court’s Local Patent Rules, specifically, P.R. 3-1. In fact very little investigation was undertaken.” (emphasis mine). He noted that despite being given additional time, Plaintiffs’ PICs had not been updated adequately and remained insufficient. The Court also noted that the Plaintiffs’ initial PICs wholly failed to comply with the PRs with respect to certain claims, claiming that the Plaintiffs “lacked sufficient information to determine whether a particular product included the elements specified in the claim” – and the supplemental claim charts were used to provide information that should have been provided initially, conduct that Judge Bush found “should not go unpunished.”
“As to Defendant Rockwell’s products, the Plaintiffs did not perform the requisite pre-suit diligence” Judge Bush held, noting that it didn’t get any better when they were given an opportunity to revise their PICs either. As a result, Judge Bush struck all the Plaintiffs’ PICs with respect to any Rockwell products, and in light of this ruling dismissed Rockwell’s motion for dismissal sanctions as moot.
Judge Bush limited the Plaintiffs to the remaining 52 products in the case, and ordered the Plaintiffs to provide amended PICs with respect to the products alleged against the remaining defendants within two weeks.
Although the order doesn’t reflect it, I am told that the plaintiffs dismissed their case before the two weeks ran. I am speculating here, and haven’t talked to any of the lawyers in the case about how the dismissal came out (which is likely confidential anyway), but since there would undoubtedly have been counterclaims for invalidity and noninfringement, and there’s no right to nonsuit in federal court when the other side has claims, my guess would be that there was an agreed dismissal pursuant to some sort of settlement agreement under which the plaintiff gave up a substantial part (perhaps all) of their claims, or agreed to conditions on refiling in order to get out of the rocket docket before the deadline to get adequate PICs served ran, as well as have the Court look at the adequacy of their prefiling investigation as to the other defendants as well.
This is a good example of how the local rules work to the benefit of defendants in the Eastern District as well as the plaintiffs. As any local lawyer will tell you, in patent or any other civil case, but especially in a patent case, where the local rules impose substantial obligations on a plaintiff early in a case, if you're not ready to go really, really fast, file someplace else.