EON Corp. IP Holdings, LLC v. Sensus USA Inc., 2010 WL 346218(E.D.Tex. Jan 21, 2010) (NO. 6:09-CV-116)
Judge: John Love
Holding: Motion to Compel Testimony/Strike Infringement Contentions DENIED without prejudice; Motion for Protective Order DENIED; Infringement contentions ordered supplemented.
This opinion from Judge Love provides some additional insight into the recurring issue in patent litigation of when a party's contentions - here a plaintiff's infringement contentions - are adequate.
In this case, the plaintiff served its PICs, the defendant claimed they were inadequate and tried to get a 30(b)(6) deposition on them. Plaintiff refused to produce a witness and the parties' meet and confer efforts failed. But the dispute over the contentions generated a related dispute in the form of a discovery dispute over whether certain of the defendants' products were properly the subject of discovery.
Judge Love began with the adequacy of the infringement contentions. "EON's infringement contentions are deficient because they fail to identify each accused instrumentality in its 3-1(c) chart," he wrote. "The infringement contentions include one claim chart for each asserted claim. The accused system identified by each claim chart is simply described as “Sensus FlexNet and compatible equipment.” The description of the accused system explicitly references only six of the eleven disclosed accused instrumentalities." (Emphasis mine). But this wasn't an example of the plaintiff using one set of allegations against multiple products, Judge Love noted. "If certain portions of EON's chart are applicable to more than one of the accused instrumentalities, then EON should
clearly indicate as much. EON need not unnecessarily duplicate its efforts, as such repetition is inefficient and does not advance the notice function." The bottom line was that there needed to be something on each product, and here there was not.
The problem was a qualitative as well as a quantitative one, he went on to observe, writing that "EON's use of block quotes from and string citations to Sensus documents is likewise insufficient to satisfy the notice function intended by P.R. 3-1 infringement contentions." What EON had to do was to explain its theories of how the accused instrumentalities satisfy the asserted claim elements. While identification of evidence supporting an infringement theory may aid the notice function, simply block quoting references, did not necessarily advise a defendant of where a plaintiff believes asserted elements are found in an instrumentality. "EON must put forward its position as to where it believes particular limitations are met by the accused instrumentalities. EON's theories may be bolstered or further illuminated by citations to documents and evidence, but identification of evidence alone does not independently satisfy the notice function of the rules."
But Judge Love didn't agree with Sensus' objection that the documents EON relied on describe gas and water meters incapable of two-way communication, which it contends are products that could not infringe. Sensus opposed the use of these documents because it believes the asserted claims can only be infringed two-way devices. "These objections raise substantive issues that are not properly addressed by infringement contentions," Judge Love wrote. "Patent Rule 3.1 does not require EON to marshal evidence or otherwise prove its infringement case. Whether certain documents support or refute EON's infringement case is a question for summary judgment or trial. The use of these documents does not render EON's infringement contentions deficient." (Internal citations omitted). Judge Love also rejected a claim by Sensus that he construed as attempting to extract EON's claims constructions prematurely. As a result of his rulings, Judge Love ordered that the contentions be supplemented.
The second major issue addressed in Judge Love's order was the defendant's opposition to the Plaintiff's discovery directed at products the defendant believed could not infringe because they were one-way, as opposed to two-way devices. Judge Love considered the standard for a protective order in FRCP 26(b)(1) before concluding that Sensus had not showed the requisite good cause for a protective order. "Although complying with discovery requests can be an expensive endeavor, Sensus has failed to come forward with a demonstration of fact that it would be unduly burdened," Judge Love concluded, pointing up something that judges have often noted, although no one seems to be listening - the lack of facts - as opposed to mere allegations - to support the claimed inconvenience or burden.
