The opinion of the court was delivered by: B. Lynn Winmill Chief Judge United States District Court
MEMORANDUM DECISION AND ORDER
The Court has before it Escort's motion to clarify and/or amend its patent invalidity contentions, and Fleming's motion to strike 286 new invalidity contentions made by Escort. The motions are fully briefed and at issue. For the reasons explained below, the Court will deny Escort's motion and grant Fleming's motion in large part.
The cross-motions raise issues about the nature and timeliness of defendant Escort's patent invalidity contentions. After the filing of this case -- in which plaintiff Fleming alleges that defendants (collectively referred to as Escort) infringed Fleming's radar detector patents -- the Court issued a Case Management Order (CMO). Consistent with the Local Patent Rules, the CMO set up a schedule that included a deadline for Escort to identify its patent invalidity contentions by July 2, 2009. See Case Management Order (Dkt. 19); see also Local Patent Rule 3.3. Escort met this deadline, and then on August 5, 2010, filed amended contentions based on counsels' stipulation and the Court's approval. See First Supplemental Patent Invalidity Contentions (Dkt. 65)
The Court set a schedule for the disclosure of experts to be completed by mid-December of 2010, and set a discovery deadline of January 31, 2011. Escort timely filed the report of its expert Dr. Grindon in early December of 2010.
About three weeks later, Fleming filed his motion to strike, now before the Court, alleging that Dr. Grindon added 286 new patent invalidity contentions almost 18 months after the deadline for invalidity contentions of July 2, 2009. In its response, Escort denies that Dr. Grindon added any new contentions, but in the alternative seeks leave to amend its invalidity contentions to add any of Dr. Grindon's opinions that are deemed new. See Escort Response Brief (Dkt. 94) at n. 4, p. 10.
In addition, Escort has filed a separate motion to clarify or amend its invalidity contentions to allow it (1) to rely on the Martin and Silverman patents (patents '776 and '493) as rendering Fleming's claims obvious, and (2) to rely on the Rayner U.S. Patent Application, filed on July 9, 1998, as anticipatory prior art.
The Court will resolve both motions after reviewing the governing legal standards.
Both motions turn largely on the level of detail required for patent invalidity contentions and the standard for amending those contentions. The required detail is set forth in Local Patent Rule 3.3. It requires that invalidity contentions contain, among other things, (1) a detailed identification of each item of prior art, (2) a statement of whether "each item of prior art anticipates each asserted claim or renders it obvious," (3) if obviousness is alleged, "an explanation of why the prior art renders the asserted claim obvious . . . ," and (4) a chart identifying where specifically in each alleged item of prior art each limitation of each asserted claim is found . . . ."
This District's Local Patent Rules were adopted from those governing patent litigation in the Northern District of California. The court there described the purpose of those Rules, and the statement applies with equal strength in this District:
The Patent Local Rules were adopted by this District in order to give claim charts more "bite." The Rules were designed 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.
Nova Measuring Instruments, Ltd. v. Nanometrics, Inc ., 417 F.Supp.2d 1121, 1122-23 (N.D. Cal. 2006). To implement this "bite," the Local Patent Rules require that the invalidity contentions may only be amended "by order of the Court upon a timely ...