Oil-Dri Corporation of America v. Nestle Purina Petcare Company
Filing
102
MEMORANDUM Opinion and Order signed by the Honorable Virginia M. Kendall on 5/9/2017. The Court construes Nestle's motions as motions to compel. The Court grants Nestle's Motions to Strike for Oil-Dri's Assertion of Alleged Induced Inf ringement 55 , Attempt to Claim an Earlier Priority Date 60 , 70 , and Initial and First Revised Infringement Contentions 80 , and Oil-Dri has 21 days from the entry of this Order to amend and disclose their Revised Initial Contentions consistent with Order. The Court denies Nestle's Motions to Strike for Oil-Dri's Addition of Alleged Use of Purported Invention 58 . Mailed notice(lk, )
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
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OIL-DRI CORPORATION OF AMERICA,
Plaintiff,
v.
NESTLÉ PURINA PETCARE COMPANY,
Defendant.
No. 16 C 9179
Judge Virginia M. Kendall
MEMORANDUM OPINION AND ORDER
Defendant Nestlé Purina Petcare Company (“Nestlé”) filed four Motions to Strike
Infringement Contentions disclosed by Plaintiff Oil-Dri Corporation of America (“Oil-Dri”). For
the below reasons, the Court grants in part and denies in part Nestlé’s Motions to Strike for OilDri’s Assertion of Alleged Induced Infringement [55], Addition of Alleged Use of the Purported
Invention [58], Attempt to Claim an Earlier Priority Date [60, 70]1, and Initial & First Revised
Infringement Contentions [80].
BACKGROUND
On September 23, 2016, Oil-Dri sued Nestlé for patent infringement of its cat litter
product U.S. Patent No. 9,408,368 (“‘368 Patent”) pursuant to 35 U.S.C. § 271 et. seq. (Dkt. 1,
at 1-2.) The patent implicates four Tidy Cats Lightweight products: 4-in-1 Strength; 24/7
Performance; Glad Tough Odor Solutions; and Instant Action (“Accused Instrumentalities”).
(Id., ¶ 7.)
The products use clumping clay composed of sodium bentonite (“NaB”) and a
mineral known as “perlite.” (Id. at 9.) The ‘368 Patent specifies, in pertinent part, that: NaB
1
Nestlé’s Attempt to Claim an Earlier Priority Date (Dkt. 70) provides a sealed, unredacted version of the redacted
version (Dkt. 60).
1
comprises at least 47% of the product’s external, exposed surface area (“ESA”); the ESA of the
granular material be 5-53% of the total ESA of the mixture; and the mixture be “removably
clumpable.” (Id.)
Oil-Dri timely provided its Initial Infringement Contentions Pursuant to Local Patent
Rule 2.2 (“Initial Contentions”) on December 2, 2016. (Dkt. 56-1, at 2; Dkt. 28, at 1, 3.) In its
Initial Contentions, Oil-Dri accused Nestlé of infringing the claims of the ‘368 Patent “pursuant
to 35 U.S.C. § 271 et. seq” through “the manufacture, use, offer for sale and the sale of the
Accused Products (or through earlier compositions, provided during the manufacturing
process)….” (Dkt. 56-1, at 2, ¶ a-b; Dkt. 56-1, at 6.) Oil-Dri contended that each of the Accused
Instrumentalities literally infringes or, to the extent that any element is not found, that its
equivalent is present. (Dkt. 56-1, at 3, ¶ d.) Oil-Dri stated that it did not believe that Local
Patent Rules (“LPR”) 2.2(e) or 2.2(h) were relevant. (Id., at 3-4, ¶¶ e, h.) Further, Oil-Dri stated
that it was entitled to a priority date of “at least as early as the June 25, 2012 filing date of
U.S.S.N. 13/524,021” and “likely as early as February 9, 2012 based on earlier documentation,
although the analysis of discovery continues.” (Id., at 3, ¶ f.) Oil-Dri also accused Nestlé of
willful infringement, contending that Nestlé “has known of the ‘368 Patent, or any of the priorfiled, published patent applications in its priority chain” (including Application 13/524,021,
published December 20, 2012) due to a March 2014 letter from Oil-Dri Vice President and
General Counsel, Doug Graham, to Nestlé’s President, Nina Krueger, about Patent No.
5,975,019 (“‘019 Patent”) and earlier, ongoing litigation between the parties about ‘019 Patent
(in Case No. 15-CV-1067). (Id., at 3-4, ¶ g.) Oil-Dri also alleges that it believes any claim
element literally infringes, but “[t]o the extent that any claim element is found not to be present
in any of the Accused Instrumentalities, then Oil-Dri believes that its equivalent is present.” (Id.,
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at 3, ¶ d.)
Alongside its Initial Contentions, Oil-Dri stated that it “reserves the right to
supplement these disclosures as further information becomes available.” (Id., at 2.) Attached to
its Initial Contentions, Oil-Dri provided an asserted claims chart which accused Nestlé of
infringing on Claims 4-6 of ‘368 Patent for a composition where the granular filler material
comprises anywhere from 5-53% (Claim 4), 10-53% (Claim 5), and 15-53% (Claim 6) of the
ESA. Oil-Dri based its claims on Nestlé’s Material Safety Data Sheets, Oil-Dri testing, and
Nestlé’s disclosed advertising (see Dkt. 56-3, at 6-9; Dkt. 56-3, at 13-14.)
The parties participated in a Rule 26(f) planning phone conference on November 18,
2016, where the parties agreed that the final date for Oil-Dri to amend its pleadings would be
December 7, 2016. (Dkt. 28, at 4.) After this date passed, on December 28, 2016, Oil-Dri sent
Revised Initial Infringement Contentions (“Revised Contentions”) to Nestlé.
The Revised
Contentions accused Nestlé of violating specific subsections of the underlying patent
infringement statute, namely 35 U.S.C. § 271(a) for its manufacture and sales of the Accused
Products and § 271(b) for “inducing others (e.g., its retailers) to engage in those sales.” (Dkt. 563, at 2, ¶ a-b.) Oil-Dri updated ¶ e, thus bringing LPR 2.2(e) into play, by accusing Nestlé of
indirectly infringing and inducing infringement by “advertising, marketing and selling the
Accused Instrumentalities to Nestlé retailers, for example, for resale to consumers” in violation
of 35 U.S.C. § 271(b). (Id., at 3, ¶ e.) Oil-Dri also updated its statement under LPR 2.2(h).
Instead of declining that the rule played a role in the suit, Oil-Dri’s Revised Contentions state
simply that “Internal Oil-Dri testing and analysis, as shown by the documentation referenced in
subparagraph f…supports the invention dates provided…for each of the Accused Claims.” (Id.,
at 4, ¶ h.) Oil-Dri also specified priority dates relating to particular elements of the asserted
claim, contending that ‘368 Patent entitles Oil-Dri to a priority date “of at least as early as July
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14, 2010 as to granular filler materials generally” and “at least as early as February 9, 2012 as to
perlite,” citing to Oil-Dri Bates-stamped disclosures and asserting that internal testing and
analysis confirmed these invention dates. (Id., at 3-4, ¶¶ f, h.) Oil-Dri reiterated that, “[t]o the
extent that any claim element is found not to be present in any of the Accused Instrumentalities,
then Oil-Dri believes that its equivalent is present.” (Id., at 3, ¶ d.)
Nestlé moves to strike Oil-Dri’s Initial and Revised Infringement Contentions, in part and
in their entirety (Dkt. 55; Dkt. 58; Dkt. 60; Dkt. 70; Dkt. 80), asserting that each change was
untimely and improper, or otherwise insufficient.
LEGAL STANDARD
Under LPR 2.2, a party claiming patent infringement must serve its counterpart with
initial infringement contentions that identify, in pertinent part:
(a) …each claim of each patent in suit that is allegedly infringed by the opposing party,
including for each claim the applicable statutory subsection of 35 U.S.C. § 271;…
(c) [in a chart] …specifically where each element of each asserted claim is found within
each Accused Instrumentality…;
(d) …whether each element of each asserted claim is claimed to be present in the
Accused Instrumentality literally or under the doctrine of equivalents. For any claim
under the doctrine of equivalents, the Initial Infringement Contentions must include an
explanation of each function, way, and result that is equivalent and why any differences
are not substantial;
(e) for each claim that is alleged to have been indirectly infringed…any direct
infringement and a description of the acts of the alleged indirect infringer that contribute
to or are inducing that direct infringement…;
(f) for any patent that claims priority to an earlier application, the priority date to which
each asserted claim allegedly is entitled;
(g) …the basis for any allegation of willful infringement; and
(h) if a party claiming patent infringement wishes to preserve the right to rely, for any
purpose, on the assertion that its own…apparatus, product, device, process, method, act,
or other instrumentality practices the claimed invention… each such apparatus, product,
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device, process, method, act, or other instrumentality that incorporates or reflects that
particular claim...
N.D. ILL. L.P.R. 2.2. The local rules intend initial infringement contentions to provide early,
fair notice of the plaintiff's theories of infringement. See e.g., Fujitsu Ltd. v. Tellabs Operations,
Inc., No. 08 C 3379, 2012 WL 5444979, at *4 (N.D.Ill. Mar. 21, 2012); Trading Techs. Int'l, Inc.
v. CQG, Inc., No. 05 C 4811, 2014 WL 4477932, at *2 (N.D.Ill. Sept. 10, 2014) (citation
omitted); see also Rehco, LLC v. Spin Master, Ltd., No. 13 C 2245, 2014 WL 1088517, at *4
(N.D.Ill. Mar. 17, 2014) (denying motion to strike as “lack[ing] merit” because initial
infringement contentions included “detailed charts”). Initial infringement contentions must meet
a notice pleading standard which is meant to prevent “shifting sands” gamesmanship in claim
construction. See O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., 467 F.3d 1355, 1365
(Fed.Cir. 2006) (“…[T]he Federal Rules require only notice pleading by the claimant.”); see e.g.,
Trading Techs. Int'l, Inc., 2014 WL 4477932, at *2 (citation omitted); Fujitsu Ltd. v. Tellabs
Operations, Inc., Nos. 08 C 3379 & 09 C 4530, 2012 WL 5444979, at *4 (N.D.Ill. Mar. 21,
2012) (citing O2 Micro, 467 F.3d at 1364 (internal quotation and citation omitted)). Parties must
offer “meaningful” and “nonevasive” disclosures, not just boilerplate language. N.D. ILL.
L.P.R. 2.0 cmt. Overall, district courts possess wide discretion in interpreting their local rules.
See Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1324 (Fed.Cir. 2016).
As another court recently articulated, motions to strike initial infringement contentions
are “rare” in this District and no standard has been clearly established for evaluating them. See
e.g., Ventriloscope v. MT Tool and Manufacturing, No. 16 C 5298, 2017 WL 489416, at *3
(N.D.Ill. Feb. 6, 2017). Most relevant to this case, the Local Patent Rules for the Northern
District of Illinois do not explicitly prescribe whether, when, and how a party may amend their
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initial infringement contentions, nor whether and when they can break from their agreed-upon
disclosure schedule. See N.D.ILL. L.P.R. 2.2; Fed. R. Civ. P. 26.
Yet the Local Rules, along with those in other districts with “nearly identical” terms,
offer insights. See Ventriloscope, 2017 WL 489416, at *3 n.1. For example, in the Northern
District of California, a district with similar local rules, parties may amend their infringement
contentions “only by order of the Court upon a timely showing of good cause,” including upon
the recent discovery of material, prior art or nonpublic information about the accused
instrumentality despite earlier due diligence. N.D. CAL. L.P.R. 3.6; see O2 Micro Intern. Ltd.,
467 F.3d at 1366 (“‘[G]ood cause’ requires a showing of diligence”). Other districts that require
such contentions have “frequently treated” motions to strike such contentions as motions to
compel their amendment. See e.g., Geovector Corp. v. Samsung Elecs. Co., No. 16 C 2463,
2017 WL 76950, at *7 (N.D.Cal. Jan. 9, 2017); Yama Capital LLC v. Canon Inc., No. 12 C 7159,
2013 WL 6588589, at *4 (S.D.N.Y. Dec. 13, 2013) (“Even where a defendant only moves to
strike the infringement contentions, [the motion] may be construed …as an alternative motion to
compel more detailed…contentions.” (citation and internal quotation marks omitted)). Those
courts have also held that striking infringement contentions is a “severe sanction” that “should be
used sparingly” and “only for good cause.” See e.g., Finjan, Inc. v. Proofpoint, Inc., No. 13 C
5808, 2015 WL 1517920, at *12 (N.D.Cal. Apr. 2, 2015); Avago Techs., Inc. v. IPtronics Inc.,
No. 5:10 C 2863, 2015 WL 4647923, at *2 & n.6 (N.D.Cal. Aug. 5, 2015) (citing Finjan for
same proposition).
Another court in this district has found that “it is appropriate to treat
Defendant’s motion [to strike] as seeking to compel more detail…” See e.g., Ventriloscope,
2017 WL 489416, at *3.
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DISCUSSION
I.
Assertion of Alleged Induced Infringement (Dkt. 55)
Nestlé argues that Oil-Dri’s allegation of induced infringement in the Revised
Contentions does not comport with Oil-Dri’s Complaint; that Oil-Dri untimely introduced the
allegation after the parties’ agreed-upon deadline to amend the infringement contentions; and
that the allegation fails to satisfy the requirements for induced infringement. (Dkt. 55.) Oil-Dri
argues that Nestlé cannot point to any legal authority requiring that it alleged induced
infringement in either its Complaint or Initial Contentions; that it did not learn about the alleged
induced infringement until after disclosing its Initial Contentions; and that, in any case, the
details provided suffice to allege induced infringement. (Dkt. 75, at 1, 4-5.)
The local rules require that a party’s initial infringement contentions specify the statutory
subsection that applies to the claim at hand and that each claim alleging indirect infringement
supplies a “a description of the acts of the alleged indirect infringer that contribute to or are
inducing that direct infringement…” N.D. ILL. L.P.R. 2.2(a), 2.2(e). Such allegations require
the claimant to allege that the defendant possessed knowledge that the induced acts constitute
patent infringement. See Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 765 (2011).
No authority states that the allegation must appear in the complaint. In fact, the Preamble to the
local rules suggests that “[c]omplaints…in most patent cases are worded in a bare-bones
fashion…” N.D.ILL. L.P.R. Preamble.
In light of this, the Court construes Nestlé’s motion to strike as a motion to compel more
detail and considers Oil-Dri’s Revised Contentions. See e.g., Ventriloscope, 2017 WL 489416,
at *3. Oil-Dri’s Complaint and Initial Contentions indeed did not include this allegation, nor
specify that Nestlé had allegedly violated any particular subsection of 35 U.S.C. § 271. (See
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Dkt. 1; Dkt. 56-1.)
However, in its Revised Contentions, Oil-Dri specifies the particular
subsection implicated for this claim by indicating that the alleged infringement violates 35
U.S.C. § 271(b). (Dkt. 56-3, at 3, ¶ e.) Its Revised Contentions accuse Nestlé of inducing
infringement through “advertising, marketing and selling the Accused Instrumentalities to Nestlé
retailers, for example, for resale to consumers,” but fail to mention any party other than Nestlé.
(Id.) In its Response, Oil-Dri explains that Oil-Dri first learned in late December about Nestlé’s
collaboration with Walmart and other retailers in the development of Nestlé’s accused Tidy Cats
Lightweight cat litters, and provides a timeline to explicate how Nestlé could have “known” that
it infringed on ‘368 Patent at that time. (Dkt. 75, at 4.) In doing so, Oil-Dri’s Response provides
a more sufficient description, including the requisite allegations that Nestlé possessed knowledge
that the induced acts constituted infringement. (See Dkt. 56-3.) See Global-Tech Appliances,
Inc., 563 U.S. at 765; see e.g., Fatigue Fracture Tech. v. Navistar, No. 15 C 5667, Dkt. 66
(N.D.Ill. Oct. 17, 2016). Construed as a motion to compel more detail, the Court grants Nestlé’s
motion regarding Oil-Dri’s allegation of induced infringement (Dkt. 55) and requires Oil-Dri to
disclose Revised Contentions alleging Nestlé’s knowledge within 21 days of this Order.
II.
Addition of Alleged Use of the Purported Invention (Dkt. 58)
Nestlé argues that Oil-Dri failed to preserve the right to rely on the assertion that its own
products practice the claimed invention by not including such a claim in the Complaint or its
Initial Contentions and by insufficiently describing any product that uses the claimed invention.
(Dkt. 58.) Oil-Dri responds simply that Oil-Dri had “never practiced the Asserted Claim of the
‘368 Patent-in-suit because it has never sold a cat litter with perlite,” but that Oil-Dri counsel
later learned that “Oil-Dri had commercialized cat litter falling within the scope of one or more
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non-asserted claims of the ‘368 Patent-in-suit,” and accordingly revised its infringement
contentions promptly after learning this. (Dkt. 75, at 5.)
Local Rule 2.2(h) requires parties to specify in their initial contentions each “apparatus,
product, device, process, method, act, or other instrumentality” for which the party wishes to
preserve its right to rely on the assertion that its own such instrumentality practices the claimed
invention.
N.D. ILL. L.P.R. 2.2(h). No rule precludes Oil-Dri from amending its contentions,
and other courts have allowed such amendments with good cause and if timely. See O2 Micro,
467 F.3d at 1364 (finding valid Northern District of California local rules that allow a party to
revise its final infringement contentions more than 30 days after filing them “by order of the
Court…upon a showing of good cause” (internal citation omitted)); see e.g., DCG Systems v.
Checkpoint Technologies, LLC, No. C 11-03792 PSG, 2012 WL 1209161, at *3 (N.D.Cal. Apr.
16, 2012) (bulk of leave to amend denials occur because patentee “unreasonably delayed
amending the infringement contentions – five months to one year – or there were errors or
omissions that patentee’s counsel admitted was his own oversight.”).
Guided by these principles, the Court weighs whether Oil-Dri appropriately revised its
Initial Contentions to add the use of a purported invention. The omission may have occurred due
to counsel error, as Oil-Dri’s Response readily admits that it revised its contentions on this
matter after Oil-Dri counsel learned more about Oil-Dri’s commercial products after disclosing
its Initial Contentions, which could potentially serve as grounds to deny Oil-Dri’s opportunity to
amend. (Dkt. 75, at 5.) See e.g., id. However, Oil-Dri revised its contentions promptly, only a
few weeks after disclosing its Initial Contentions to Nestlé. See e.g., id. (See Dkt. 56-1; Dkt. 563.) Fact discovery continues, such that Nestlé has not been unduly prejudiced by this revision,
and Nestlé cites to no case law to support its assertion that Oil-Dri was required to disclose this
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information in its Initial Contentions without the ability to later revise them. (See Dkt. 58; Dkt.
84.)
Accordingly, allowing this revision constitutes an appropriate accommodation to the
parties’ pretrial schedule. A motion to strike provides a severe sanction, especially at this stage.
See e.g., Ventriloscope, 2017 WL 489416, at *3; DCG Systems, 2012 WL 1209161, at *3. The
Court therefore denies Nestlé’s Motion to Strike Oil-Dri’s Addition of Alleged Use of the
Purported Invention (Dkt. 58).
III.
Attempt to Claim an Earlier Priority Date (Dkt. 60, 70)
Nestlé argues that Oil-Dri’s revised priority date employs a “shifting sands” approach
that does not comport with the Local Patent Rules, and that Oil-Dri has prejudiced Nestlé
through this gamesmanship. (Dkt. 60; Dkt. 70.) In response, Oil-Dri argues that it should be
allowed to make such revisions, and that it did so promptly, but that it provided its earliestclaimed priority date in its Initial Contentions in any case. (Dkt. 75, at 1-4.)
The Local Rules require parties’ initial infringement contentions to identify “for any
patent that claims priority to an earlier application, the priority date to which each asserted claim
allegedly is entitled…” N.D.ILL. L.P.R. 2.2(f). While no rule bars parties in this district from
amending their priority date in revised initial contentions, other districts with local rules utilizing
similar language have pushed for specific dates, not ranges, early on during discovery. See e.g.,
Richtek Technology Corporation v. uPI Semiconductor Corporation, No. 09 C 5659 WHA, 2016
WL 4269095, at *2 (N.D.Cal. Aug. 15, 2016) (requiring claimant to assert earlier priority date
“at the outset” of infringement contentions and denying leave to amend where claimant provided
no explanation for failing to do so); Blue Spike, LLC v. Adobe Systems, Inc., et al., No. 14 C
1647-YGR (JSC), at *7 (N.D.Cal. Jan. 26, 2016) (patentee must assert a particular priority date,
“not a start date, end date, or date range,” and may not use “no later than” language to preserve
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its ability to assert an earlier priority date down the road (internal citation omitted)); Harvatek
Corporation v. Cree Inc., et al., No. 14 C 5353 WHA, 2015 WL 4396379, at *3 (N.D.Cal. July
17, 2015) (striking “at least as early as” language where claimant submitted revised priority date
two months after disclosing initial contentions). But see, e.g., DCG Systems, 2012 WL 1209161,
at *3 (revisions submitted a few weeks later occurred within a reasonable timeframe).
Oil-Dri initially stated that it was entitled to a priority date of “at least as early as the June
25, 2012 filing date of U.S.S.N. 13/524,021” and “likely as early as February 9, 2012 based on
earlier documentation, although the analysis of discovery continues.” (Dkt. 56-1, at 3, ¶ f.) OilDri later revised these priority dates to reflect dates relevant to particular elements of the asserted
claim, contending that ‘368 Patent entitles Oil-Dri to a priority date “of at least as early as July
14, 2010 as to granular filler materials generally” and “at least as early as February 9, 2012 as to
perlite.” (Id.) Oil-Dri uses some of this same ambiguous language that theoretically would
allow them to keep moving the goal post on its alleged priority date.
Yet given that no rule in this district clearly outlines whether and when claimants may
provide revised initial contentions, the Court finds that, without such prior warning, striking OilDri’s revised priority date would provide a severe sanction. See e.g., Ventriloscope, 2017 WL
489416, at *3. Instead, the Court orders Nestlé to disclose Revised Contentions within 21 days
of this Order that assert their final, specific priority dates for these claims, without the use of “no
later than” or “at least as early as” language and without leave to further amend.
IV.
Initial and First Revised Infringement Contentions (Dkt. 80)
In addition to Nestlé’s Motions to Strike specific sections of Oil-Dri’s Revised
Contentions, Nestlé moves to strike the Initial and Revised Contentions in their entirety. (Dkt.
80.) Nestlé asserts that both of Oil-Dri’s Contentions are “boilerplate” and fail to disclose any
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basis for the allegations (Id. at 2-5), improperly include “placeholders” without the requisite
specificity (Id. at 7-9), and that neither contention sufficiently alleges willful infringement under
LPR 2.2(g) (Id. at 9).2 Oil-Dri maintains that it has complied with the Local Patent Rules by
thoroughly alleging infringement and providing sufficient supporting materials. (Dkt. 89.)
A. Boilerplate and Placeholder Language
Both Oil-Dri’s Initial and Revised Contentions include a chart detailing Claims 4-6.
(Dkt. 56-1; Dkt. 56-3.) The chart outlines the components of the Accused Products – namely
that they employ a composition comprising a “mixture”; including “sodium bentonite”; “and a
granular filler material, which comprises perlite”; “wherein sodium bentonite comprises at least
47% of the total external surface area of the mixture”; “wherein the granular material comprises
5% [or 10% or 15%] of the total external surface area of the mixture”; “and wherein the mixture
is removably clumpable.” (Id.) For each element, Oil-Dri’s chart explains its basis for the claim
that Nestlé improperly infringes the element with its Accused Products, whether through Nestlé’s
Material Safety Data Sheets, Oil-Dri’s testing, or Nestlé’s advertising stating that the mixture
forms “[l]ight, tight clumps for easy scooping.” (Id.) Each element and explanation speaks to
Oil-Dri’s contention that Nestlé has infringed through the “manufacture, use, offer for sale and
the sale of the Accused Products.” In so doing, to the extent that Oil-Dri’s claim relates to how
the Accused Products literally infringe, Oil-Dri provides more than “boilerplate” language with
“placeholders,” instead providing detail sufficient to give Nestlé early, fair notice of the claims
and their bases, especially at this stage of the litigation while discovery continues. See O2 Micro
Intern. Ltd., 467 F.3d at 1365; N.D.ILL. L.P.R. 2.0, 2.2(c); see e.g., Trading Techs. Int'l, Inc.,
2014 WL 4477932, at *2; Fujitsu Ltd., 2012 WL 5444979, at *4.
2
Nestlé also argues that Oil-Dri’s Contentions should be struck because Oil-Dri has attempted to circumvent the
disclosure requirements by alleging attorney-client privilege over its testing data. (Id. at 5-7.) The Court has dealt
with this allegation in an earlier Order, and need not revisit that discussion here. (See Dkt. 95.)
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However, Oil-Dri hedges its claim, acknowledging that the literal claim elements may not
be found to be present in any of the Accused Instrumentalities, but instead that their equivalents
may be present. (Dkt. 56-1, at 3, ¶ d.) Since the local rules require any claim under the doctrine
of equivalents to include “an explanation of each function, way, and result that is equivalent and
why any differences are not substantial” in a party’s initial contentions, N.D.ILL. L.P.R. 2.2(d),
Oil-Dri’s contentions fail in this regard. To maintain its claim that Nestlé’s equivalents of the
Accused allegedly infringed, Oil-Dri must revise its contentions in 21 days.
B. Willful Infringement
Regarding its willful infringement claim, Oil-Dri must comply with Local Rule 2.2(g),
which requires claimants to identify “the basis for any allegation of willful infringement.” In its
Initial Contentions, Oil-Dri accuses Nestlé of willful infringement, contending that Nestlé “has
known of the ‘368 Patent, or any of the prior-filed, published patent applications in its priority
chain,” including Applications 15/053,114, published June 16, 2016, and 13/524,021, published
December 20, 2012, because of the earlier and ongoing litigation in case No. 15-CV-1067 about
‘019 Patent, distinct from ‘368 Patent, the patent at issue in the instant case. (See Dkt. 56-1, at 34, ¶ g.) Oil-Dri’s Revised Contentions add that Oil-Dri refers to its “patent pending” lightweight
cat litters in its 2012 Annual Report, which the company made available on its website in midNovember 2011. (Dkt. 56-3, at 3-4, ¶ g.)
Notice about alleged infringement of one patent does not necessarily imply notice or
knowledge of alleged infringements of another patent. However, construing this Motion as a
Motion to Compel, see e.g., Ventriloscope, 2017 WL 489416, at *3, and thus contemplating the
additional information provided by Oil-Dri in its Revised Contentions, the Court finds that the
mid-November 2011 publication of Oil-Dri’s Annual Report could have plausibly provided the
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source of Nestlé’s knowledge that would have allowed it to willfully infringe.
Oil-Dri’s
contentions therefore sufficiently allege this claim at this stage. See O2 Micro Intern. Ltd., 467
F.3d at 1365; N.D.ILL. L.P.R. 2.0, 2.2(c); see e.g., Trading Techs. Int'l, Inc., 2014 WL 4477932,
at *2; Fujitsu Ltd., 2012 WL 5444979, at *4.
Motions to strike initial infringement contentions rarely arise, let alone motions to strike
both a party’s Initial and Revised Infringement Contentions in their entirety.
See e.g.,
Ventriloscope, 2017 WL 489416, at *3. The Court declines to do so at this time.
CONCLUSION
For the above reasons, construing Nestlé’s motions as motions to compel, the Court
grants Nestlé’s Motions to Strike for Oil-Dri’s Assertion of Alleged Induced Infringement [55],
Attempt to Claim an Earlier Priority Date [60, 70], and Initial & First Revised Infringement
Contentions [80], and Oil-Dri has 21 days from the entry of this Order to amend and disclose
their Revised Initial Contentions consistent with this Order. The Court denies Nestlé’s Motions
to Strike for Oil-Dri’s Addition of Alleged Use of the Purported Invention [58].
________________________________________
Virginia M. Kendall
United States District Court Judge
Northern District of Illinois
Date: __5/9/2017____
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