Motion to Strike New Invalidity Theories Granted-in Part; Defendant Cannot "Reserve the Right" to Assert New Combinations

Realtime Data v. Packeteer, Inc., 2009 WL 4782062 (E.D. Tex. Dec. 8, 2009)

Judge: John Love

Holding: Motion to Strike New Invalidity Theories Granted-in Part

In this opinion, Judge Love addressed the issue of when a defendant's invalidity contentions should be stricken for failure to comply with the local rules regarding adding new prior art.  With respect to two references, Judge Love noted that they had not appeared in any invalidity chart and had not been identified claim by claim and element by element, and rejected the defendant's claim that the plaintiff was "on notice" of these references.  (Ever wanted to know how many references generate an "impossibly high number of combinations"?  Judge Love says 500 gets you there).
On a third group of references, however, Judge Love concluded that sufficient notice had been provided.  But in doing so, he rejected the claim that a defendant can "reserve the right" to combine any of the references it provides.  Such a statement does not "clearly suggest" the combination as required by P.R. 3-3, he held.
All of this was rendered somewhat moot, however, by the Court's requirement that in the interest of narrowing the case, defendant Citrix would be limited to no more than five obviousness combinations, to be disclosed within a week, with amended invalidity contentions to follow a few days later.  (Ed. note: this case was set for trial in January 2010 and settled shortly before trial).