Patent Rule 3-1 does not require plaintiff to supplement its initial disclosure of asserted claims when it learned of additional, potentially infringing products.

Integrated Circuit Systems, Inc. v. Realtek Semiconductor Co., Ltd., 308 F.Supp.2d 1106
Judge: Magistrate Judge Zimmerman
Division: Northern District of California
Date: March 11, 2004
Holding: Defendants' Motion to Compel Supplemental Disclosures DENIED
COMMENTS:
This is a patent infringement case in which the plaintiff, in its initial disclosures under Patent Local Rule 3-1 (which is used by several Eastern District judges) accused two of the defendant's product families of infringement. The plaintiff later learned that the defendant made additional product families which it plaintiff contends also infringe its patent, but it did not supplement its initial disclosures to accuse these new products. On the eve of the claim construction hearing, the defendant moved to compel the plaintiff to supplement its initial disclosures with respect to these new products.
After viewing the patent rules as a whole, Magistrate Judge Zimmerman held that their purpose was "to place the parties on an orderly pretrial track which will produce a ruling on claim construction approximately a year after the complaint is filed," and "to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed."
In light of the purposes of the patent rules, Judge Zimmerman declined to impose a duty of supplementation, at least for new products. He held that a plaintiff who later desires to accuse additional products must do so by obtaining leave of court to amend its disclosures pursuant to P.R. 3-7 unless under the circumstances of the case the party can do so by serving Final Contentions pursuant to P.R. 3-6. To allow, much less require, a plaintiff to amend or supplement its disclosures as it discovers new products would remove the claim construction process from the control of the court, which would contradict the underlying purposes of the patent rules.