Tracbeam v. AT&T, et al., 6:11cv96
Judge: Leonard Davis
Holding: Motion to Strike Plaintiff’s Infringement Contentions DENIED (and keep reading)
Two defendants filed motions to strike the plaintiff's infringement contentions, which were nearly identical and which Judge Davis found presented the same legal issue.
Importantly, Judge Davis noted that the parties disputed the exact nature of the products and services that the plaintiff accused of infringement. The plaintiff contended that the accused instrumentality was each defendant's "location – based platform" while defendants argued that the accused instrumentalities were their "location – based services." Essentially defendants believe that the plaintiff accused several of their products of infringement, while plaintiff argued it accused the entire platform that the defendants used to facilitate these services.
This basic disagreement gave rise to the dispute in that because the plaintiff believed that it accused a single instrumentality of infringement, it disclosed a single claim chart to each defendant for that defendant's location – based platform. The claim charts referred to defendants' location – based services, but they did not include claim charts for each individual location – based service. Defendants filed a motion to strike the contentions, claiming that they violated the local patent rules because they did not provide separate claim charts for each accused instrumentalities. Judge Davis disagreed:
The local patent rules were adopted to ensure each side has the information necessary to litigate its case. Under the local rules, a plaintiff’s infringement contentions must set forth its specific theories of infringement. Infringement contentions must contain enough specificity to provide defendants with notice of the plaintiff’s infringement theories. However, infringement contentions do not need to meet the level of detail required for a motion for summary judgment; infringement contentions “are not meant to provide a forum for litigation of the substantive issues.”
TracBeam’s Infringement Contentions, proposed amendments, and the resulting correspondence between the parties give Defendants sufficient notice of TracBeam’s theory of infringement. The Infringement Contentions articulate TracBeam’s specific theory of infringement against AT&T and Cellco-TracBeam accused Defendants’ respective “location-based platforms” of infringement. Each individual location-based service operates within the larger context of Defendants’ location-based platforms. Since the accused instrumentalities are AT&T and Cellco’s overall location-based platforms, it would be improper to require TracBeam to submit individual claim charts for each location-based service. Instead, TracBeam’s Infringement Contentions satisfy the local rules.
(Internal citations omitted).
Yea, even as I type this another order in this case just crossed my desk in this case in which Judge Davis denied an intervenor's motion to dismiss the plaintiffs allegations for failure to state a claim of willful infringement. So this post will be an uncredited double feature of sorts.
The intervenor's argument was that the plaintiffs willful infringement claim should be dismissed because the allegations in the plaintiffs pleading were insufficient to demonstrate that it acted despite an "objectively high likelihood its actions constituted infringement." Judge Davis concluded that the allegations were in fact sufficient. Next the intervenor argued that the allegations failed to allege willfulness before the lawsuit was filed. Judge Davis concluded that the plaintiff was permissibly advocating that the action between the intervenor and the plaintiff commenced when the intervenor joined the case one year after its filing date.
Well, dammit, here's another one. In this order, Judge Davis granted the defendants motion for leave to amend their invalidity contentions and denied the plaintiffs motion to strike those same contentions.
"These two motions boiled down to a dispute over five prior art references," Judge Davis writes. These five references were part of 10 which were not accompanied by charts identifying where each claim term was found in that reference in the defendants' original invalidity contentions. On April 4, 2012 the plaintiff moved to strike the 10 uncharted references, and defendants countered by seeking leave to amend their contentions to add charts for the references. Judge Davis denied the motion to strike and granted the motion for leave to amend noting that "[b]ecause of the unusual procedural history of this action" invalidity charts for the five references had already been properly and timely disclosed to the plaintiff because they were contained in the invalidity contentions served on the plaintiff by two intervenors. See above.
The plaintiff argued that the defendants should not be allowed to amend their invalidity contentions because they failed to meet their burden to establish diligence, and because it would suffer prejudice because if the intervenors settle, their invalidity contentions would no longer be part of the case. Judge Davis disagreed, noting that the defendants did not seek to add any new prior art references, and that the charts in question had already been disclosed. "This is not a situation where TracBeam will have to prepare for new invalidity arguments at an advanced stage of litigation. Rather, TracBeam will simply have to address duplicate arguments from additional parties." Accordingly the motion for leave to amend was granted