Defendant's Motion for Partial Judgment on the Pleadings in Patent Case Denied; Separate Contentions Not Required for Second Accused Product Where Claims Identical

Juxtacomm Technologies, Inc. v. Ascential Software Corp, --- F.Supp.2d ----, 2008 WL 1923005(E.D.Tex. May 02, 2008) (NO. 2:07CV359)
Judge: Leonard Davis
Holding: Defendant's Motion for Partial Judgment on the Pleadings DENIED
Judge Davis' opinion resolving this motion addressed a recurring issue in cases under the district's patent rules.  IBI moved for judgment because Juxtacomm did not provide separate infringement charts for both accused  products under Patent Rule 3-1(c).  Juxtacomm contended that separate charts were not necessary under the facts of its infringement allegations.
Patent Rule 3-1(c) requires a party asserting infringement to provide each defending party a “Disclosure of Asserted Claims and Infringement Contentions,” which must contain “a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality.” P.R. 3-1(c). Although the Patent Rules require separate charts for each accused product, Judge Davis noted that he and Judge Clark had previously allowed plaintiffs to use a single chart applicable to multiple products where separate charts would be identical for each product. See ConnecTel, LLC v. Cisco Sys., Inc ., 391 F.Supp.2d 526, 528-29 (E.D.Tex.2005) (“[T]he Court ORDERS ConnecTel to designate exemplar accused infringing products and compare those products to each asserted patent on a claim by claim, element by element basis.”); cf. Computer Acceleration Corp. v. Microsoft Corp., 503 F.Supp.2d 819, 823 (E .D.Tex.2007) (Clark, J.) (striking plaintiff's infringement contentions against Vista because plaintiff had only charted the Windows XP product and it was undisputed that Vista and Windows XP are only seventy percent similar).
Juxtacomm contended iWay Service Manager infringes only to the extent that it utilizes iWay DataMigrator. Accordingly, Judge Davis held that Juxtacomm may use one chart to accuse both products. Use of one chart, however, he cautioned, precludes Juxtacomm from arguing that iWay Service Manager infringes in any manner differently from how iWay DataMigrator infringes. In order to argue a different infringement theory for iWay Service Manager, Juxtacomm will need to separately chart the iWay Service Manager product, which the Court noted "will require good cause to amend its infringement contentions."