Perfect Surgical Techniques, Inc. v. Olympus Surgical & Industrial America Inc.

Filing 70

ORDER by Judge Hamilton granting 53 Motion to Strike; granting 60 Motion to Stay; denying 68 Stipulation (pjhlc2, COURT STAFF) (Filed on 6/19/2013)

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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PERFECT SURGICAL TECHNIQUES,
INC.,
Plaintiff,

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v.

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For the Northern District of California

United States District Court

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OLYMPUS AMERICA, INC., et al.,

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Defendants.
_______________________________/

No. C 12-5967 PJH
ORDER GRANTING MOTION TO
COMPEL SUPPLEMENTATION OF
PATENT DISCLOSURES AND
GRANTING MOTION TO STAY
DISCOVERY

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Defendants’ motion to strike or compel supplementation of plaintiff’s Patent Local

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Rule 3-1 disclosures and motion to stay discovery as it relates to the ’527 patent came on

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for hearing before this court on June 19, 2013. Plaintiff Perfect Surgical Techniques, Inc.

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(“plaintiff”) appeared through its counsel, Qudus Olaniran. Defendants Olympus America

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Inc., Gyrus Medical, Inc., and Gyrus ACMI, L.P. (“defendants”) appeared through their

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counsel, Deborah Fishman, Katie Scott, and Eric Kurtycz. Having read the papers filed in

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conjunction with the motions and carefully considered the arguments and the relevant legal

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authority, and good cause appearing, the court hereby GRANTS defendants’ motion to

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compel supplementation of plaintiff’s Patent Local Rule 3-1 disclosures and GRANTS

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defendants’ motion to stay discovery as it relates to the ’527 patent, for the reasons stated

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at the hearing, and summarized as follows.

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As stated at the hearing, plaintiff’s infringement contentions do not satisfy Patent

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Local Rule 3-1’s requirement of “[a] chart identifying specifically where each limitation of

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each asserted claim is found within each Accused Instrumentality, including for each

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limitation that such party contends is governed by 35 U.S.C. § 112(6), the identity of the

function.” The court agrees with plaintiff that reverse engineering of each accused product

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is not strictly necessary, but finds that some further investigation into the accused products

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is necessary to support plaintiff’s infringement allegations. Accordingly, defendants’ motion

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to compel supplementation of plaintiff’s contentions is GRANTED, and plaintiff shall have

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30 days to conduct further investigation of the accused products and serve supplemental

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contentions on defendants. The court further finds that defendants need not provide any

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discovery regarding the ’527 patent until after plaintiff serves adequate infringement

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contentions, and thus GRANTS defendants’ motion to stay discovery as it relates to the

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’527 patent. However, the court does note that defendants take issue not only with the

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For the Northern District of California

structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed

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United States District Court

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sufficiency of plaintiff’s infringement contentions, but also with the merits of plaintiff’s

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infringement theories. Any arguments regarding the ultimate validity of plaintiff’s claim

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construction positions or the sufficiency of evidence of infringement are premature at this

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stage of the case, and thus will not be considered as part of this (or any future) motion to

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strike.

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The parties have also stipulated to stay claim construction of the ’384 patent until

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either (1) plaintiff voluntarily dismisses the ’384 patent from the case, or (2) the court issues

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an order regarding defendants’ anticipated motion for summary judgment of the ’384

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patent’s invalidity. As discussed at the hearing, the open-ended nature of this stipulation is

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problematic, and for that reason, the stipulation is DENIED. Instead, as discussed at the

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hearing, the parties will meet and confer regarding claim construction deadlines for both

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patents. If plaintiff does decide to drop the ’384 patent from the case, and if the parties can

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agree on a shortened schedule for claim construction that allows the court to keep the

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current Markman hearing on September 25, 2013, the parties shall submit a stipulation

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setting forth the proposed schedule. If plaintiff decides not to drop the ’384 patent from the

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case, defendants will be permitted to file an early motion for summary judgment. If the

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claim construction hearing needs to be continued, the tutorial will be held on May 2, 2014,

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and the Markman hearing will be held on May 14, 2014. The parties are directed to keep

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the court apprised of any decision regarding the ’384 patent, and to submit a stipulation

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regarding claim construction deadlines within one week after service of plaintiff’s

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supplemental infringement contentions.

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IT IS SO ORDERED.
Dated: June 19, 2013
______________________________
PHYLLIS J. HAMILTON
United States District Judge

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For the Northern District of California

United States District Court

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