BOSTON SCIENTIFIC CORPORATION ET AL V. COOK GROUP INCORPORATED ET AL

Filing 611

ORDER REGARDING DEFENDANTS' SUPPLEMENTAL INVALIDITY CONTENTIONS - Plaintiffs' Motion to Strike Defendants' Supplemental Invalidity Contentions [Dkt. 573 ] is DENIED and Defendants' Conditional Motion for Leave to Exceed a Li mit of 24 Prior Art References to the Extent the Court Finds (1) That Such a Limit Applied to Cook's December 2021 Invalidity Contentions, and (2) That Cook Exceeded This Limit [Dkt. 582 ] is GRANTED. Neither party is entitled to fees with regard to the instant motions. See Order for additional information. Signed by Magistrate Judge Mark J. Dinsmore on 3/4/2022. (SWM)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
BOSTON SCIENTIFIC CORPORATION, et al.,
Plaintiffs,
v.
COOK GROUP INCORPORATED, et al.,
Defendants.

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No. 1:17-cv-03448-JRS-MJD

ORDER REGARDING DEFENDANTS' SUPPLEMENTAL
INVALIDITY CONTENTIONS
This matter is before the Court on Plaintiffs' Motion to Strike Defendants' Supplemental
Invalidity Contentions [Dkt. 573] and Defendants' responsive Conditional Motion for Leave to
Exceed a Limit of 24 Prior Art References to the Extent the Court Finds (1) That Such a Limit
Applied to Cook's December 2021 Invalidity Contentions, and (2) That Cook Exceeded This
Limit [Dkt. 582]. For the reasons set forth below, the Court DENIES Plaintiffs' motion and
GRANTS Defendants' motion.
This case originally was filed on October 27, 2015, in the District of Delaware. On April
24, 2017, that court entered the following oral order:
With respect to the parties' dispute regarding the reduction of the number of
asserted claims and prior art references in this case, addressed at today's discovery
dispute teleconference, the Court hereby ORDERS as follows: (1) By no later
than Friday, May 19, 2017, Plaintiffs shall identify no more than 16 claims that
they will assert in this case. (2) By no later than Friday, June 9, in conjunction
with their final invalidity contentions, Defendants shall reduce their asserted prior
art to no more than 24 references. The Court's decision is premised in part on its
expectation that the parties will further work to reduce the number of asserted
claims and prior art references as this case progresses.

See [Dkt. 573-1] (hereinafter "the Oral Order"). The instant motions arise out of the fact that
Defendants' Supplemental Invalidity Contentions ("SICs"), which were served on December 27,
2021, and filed on December 29, 2021, [Dkt. 547, 548, and 549], contain numbered lists of a
total of 39 prior art references. 1 Plaintiffs argue that Defendants have actually undercounted
their references, because some of the references "are actually groups of several different
devices," [Dkt. 574 at 8]; by Plaintiffs' count, Defendants have listed 46 prior art references in
total.
The only thing the parties appear to agree on in their briefs relating to the instant motions
is the fact that 39 (and 46) are greater than 24. Indeed, Defendants dispute the first foundational
premise of Plaintiffs' motion, arguing that the limit of 24 prior art references in the Oral Order
simply did not apply to their 2021 SICs. While Defendants' arguments are not wholly frivolous,
the Court disagrees. It is clear that the purpose of the Oral Order was to establish, for the
remainder of the case, the quantitative outer limits of both Plaintiffs' asserted claims and
Defendants' asserted prior art references. Of course, those limits could be increased if
subsequent events made them unreasonable, but that would have to be accomplished by seeking
leave of court and making a showing of good cause. See [Dkt. 449] (discussing at length, in
context of Plaintiffs' asserted claims, the applicability of the good cause standard to amending
the Oral Order). Plaintiffs are correct that Defendants should have sought leave prior to filing
their SICs if they wished to assert more than 24 prior art references.

1

Defendants' SICs related to the '048 Patent [Dkt. 547] and the '731 Patent [Dkt. 549] contain
the same numbered list of 34 prior art references. Their SICs related to the '371 Patent contain a
numbered list of 39 prior art references; that list includes the 34 references from the other two
lists and five additional references.
2

However, Defendants argue (in the alternative) that they were not required to seek leave
because they also dispute the second foundational premise of Plaintiff's motion—that they have
asserted more than 24 prior art references. The main thrust of this argument is that ten of the
prior art references included in their numbered lists should not be counted toward the limit of 24
because they are used only for "background" only. 2 Plaintiffs do not dispute that the ten
references are only used for background purposes, arguing instead that some courts "have
rejected efforts to exceed the number of prior art references in local rules by characterizing some
of the cite [sic] art as 'background.'" [Dkt. 590 at 10.] Actually, the case cited by Plaintiffs did
not involve a limit on the number of prior art references; rather, it involved the patent local
rules' requirement of "detailed disclosure of a party's patent invalidity contentions" which had to
be "done with particularity and as to each prior art for each claim limitation." Life Techs. Corp.
v. Biosearch Techs., Inc., 2012 WL 4097740, at *1 (N.D. Cal. Sept. 17, 2012). The defendants
in that case submitted an expert report that cited to prior art references that were not included in
the defendants' invalidity contentions. The same is true of the other case cited by Plaintiffs,
Pactiv Corp. v. Multisorb Techs., Inc., 2013 WL 2384249, at *2 (N.D. Ill. May 29, 2013).
However, Plaintiffs are correct that both courts refused to distinguish between "background"
prior art references and prior art references that had to be disclosed under their local rules.
Defendants, on the other hand, cite to two cases 3 which expressly held that prior art
references used for "background" did not count toward the court's limit on prior art references.

2

Defendants identify the ten references that are only used to provide background as: (1) Bales
'727; (2) Crockard '276; (3) Rose '615; (4) Gourlay '183; (5) Malecki '607; (6) Sugiyama '643;
(7) Kimura '909; (8) Kobayashi '667; (9) Shinozuka '147; and (10) El-Mallawany '203.
3
The third case cited to by Defendants, Ziilabs Inc., Ltd. v. Samsung Elecs. Co., 2015 WL
7303352, at *2 (E.D. Tex. Aug. 25, 2015), like Plaintiffs' cited cases, did not involve limitations
3

See British Telecomms. PLC v. IAC/InterActiveCorp, 2020 WL 3047989, at *6 (D. Del. June 8,
2020), 4 and Fujifilm Corp. v. Motorola Mobility LLC, 2015 WL 757575 at *29-30 (N.D. Cal.
Feb. 20, 2015). 5 The Court finds these cases more persuasive, at least in the context of
determining whether a prior art reference counts toward a court-imposed limitation. Background
references in an expert report can provide useful context to the court in understanding the
expert's opinion, but they do not thwart the goal of limiting the scope of litigated issues to a
manageable level, because they do not expand the number of prior art references that must be
addressed by the plaintiff's expert and, if the case ultimately goes to trial, presented to the jury.
Accordingly, the Court agrees with Defendants that the ten references in question—which, again,
Plaintiffs do not dispute are properly characterized as being offered as "background"—should
not count toward the 24-reference limit.
Of course, 39 (or 46) minus 10 is still greater than 24. Defendants offer various reasons
why some of their remaining references should not count toward the limit and why the remaining
references do not exceed 24, and Plaintiffs dispute each of those reasons. Reasonable minds
could differ regarding how Defendants' references should be counted, and the Court will not

on the number of prior art references, but rather the use of previously undisclosed references in
expert reports.
4
Defendants note that this case is from the District of Delaware, which is the district in which
the Oral Order was entered, and argue that "the District of Delaware's precedent should control
over that of other courts that may take a different approach in counting references." [Dkt. 585 at
14 n.1.] This argument ignores the fact that a district judge's opinion is not binding precedent,
even within the same district, and different judges within a district may take diametrically
opposed positions on a subject, as is illustrated by the Central District of California's cases
involving this issue. See footnote 5 below.
5
Fujifilm expressly acknowledged and disagreed with the holding in Life Techs., 2012 WL
4097740, a case out of the same district on which Plaintiffs rely, and cited to other cases from the
same district that also reached the same conclusion as Fujifilm with regard to prior art references
used for "background" or similar purposes.
4

devote its resources to delving into those reasons, because it is not necessary to do so. Rather,
the Court, in its discretion, GRANTS Defendants' alternative motion for leave to exceed the 24reference limit to the extent that they have done so. Just as the Court found good cause to permit
Plaintiffs to reassert a claim following the conclusion of the IPR proceedings and to amend their
complaint to add additional claims, see [Dkt. 449], the Court finds good cause to permit
Defendants to tweak their prior art references in light of those changes, even if that might mean
that they have exceeded the 24-reference limit. The Court noted in its prior ruling that
"removing cognizable claims from a case for case management purposes, while permissible,
does implicate a plaintiff's due process rights, and that leaving open the opportunity of asserting
additional claims upon a showing of good cause (or 'need') is necessary to balance those rights
against the practical realities of litigating a patent case." Id. at 6 n.5. The same is true of
limiting the number of prior art references.
The Court recognizes that Plaintiffs argue that Defendants "do[] not need more prior art"
because, even though Plaintiffs were recently permitted to assert new claims, the overall scope of
the case is smaller than it was when the 24-reference limit was imposed by the Delaware court.
As Plaintiffs see it,
[Defendants] told the Delaware court that 25 references was adequate to address
10 claims; clearly, therefore, 24 references is adequate to address seven claims.
(ECF No. 201 at 4 ("Given the number of Patents-in-Suit and the differing claim
strategies found in the patents, Cook submits that 25 is an appropriate number of
prior art references for 10 asserted claims in the four Patents-in-Suit.").) Cook
has ample room within the 24-reference limitation, given that most of its prior
defenses are subject to estoppel anyway. Cook again focuses only on what is new
since the case was stayed, pointing to new pieces of prior art that it claims it
learned about after the stay, and ignores what has been dropped. (See, e.g., Opp.
at 22-24.) When the subtractions are considered along with the additions, it is
clear that the case as a whole has shrunk. Cooks' repeated plea that it can rely on
new art and make new arguments is a red herring, because the real issue is whether
Cook should be permitted to rely on those new references in addition to all of the
5

references it relied on previously. Because the number of asserted claims has
decreased since the Narrowing Order, there is no reason to increase the number
of prior art references.
In addition, Cook does not need additional prior art because the added claims do
not raise many new issues. As to claim 13 of the '371 patent, Cook already served
invalidity contentions on it before the stay, because that claim was one of the
original 50 asserted claims. (ECF No. 377 at 1.) Claims 5 and 19 of the '731
patent are similar to claims that had been asserted before the stay except for one
claim element relating to an "increased width portion" at an end of the control
wire. (ECF No. 424 at 10). These claims do not justify expanding the 24referenece [sic] limit particularly after Boston Scientific has dropped so many
other claims.
[Dkt. 590 at 13-14] (emphasis in original). However, the fact that some claims have been
eliminated does not necessarily mean that a proportional number of prior art references are no
longer relevant or necessary. Further, as Defendants point out, the extent of the estoppel effect
of the IPR proceedings is contested by the parties. 6
The salient fact is that the 24-reference limit was by its nature somewhat arbitrary and,
just like the limitation on the number of claims asserted by Plaintiffs, always subject to being
changed for good cause. See [Dkt. 449] (discussing at length the good cause standard in context
of Plaintiffs' asserted claims). Had Defendants moved prior to the December 27, 2021, deadline
for leave to assert the list of prior art references it has now asserted, the Court without a doubt
would have found good cause and granted that motion, the good cause being Defendants' need to
adequately support their defenses in light of the new posture of the case.
Plaintiffs, however, argue that Defendants' "brazen" failure to seek leave in advance,
[Dkt. 574 at 15, 17], was "misconduct," [Dkt. 590 at 14], and "inflict[ed] maximum prejudice"

6

Defendants also note that their SICs are "half the length and significantly narrower in scope
than those served in Delaware in 2017," reflecting the narrowing of the case in light of the IPR
proceedings. [Dkt. 585 at 7.]
6

on Plaintiffs because Plaintiffs were forced to file the instant motion to strike while also
responding to Defendants' expert report, [Dkt. 574 at 15, 22]. They further argue that
Defendants' failure to seek leave "months ago," [Dkt. 590 at 12], demonstrates a lack of diligence
that precludes a finding of good cause. However, in order to move "months ago" to expand the
permissible number of prior art references, Defendants essentially would have had to have made
determinations regarding what prior art to assert months prior to the deadline for doing so—a
deadline that was arrived at based on how much time Defendants would reasonably need to
complete that task. Thus, while it would have been preferable for Defendants to file a motion for
leave enough in advance of the deadline for the motion to be resolved before Defendants' SICs
were due—so that if the motion were denied, in whole or in part, the SICs that were filed would
have complied with the Court's order—it is unreasonable to suggest that they should have done
so months in advance. 7 In addition, Plaintiffs' complaint that they had to prepare and file the
instant motion while also addressing other matters in this case rings hollow; given the rather
constant activity in this case, that would have been true regardless of when Defendants filed their
motion for leave.
The Oral Order was a pretrial order entered pursuant to Federal Rule of Civil Procedure
16(d) and, as such, it is within the Court's discretion to modify that order. See Hotaling v. Chubb
Sovereign Life Ins. Co., 241 F.3d 572, 578 (7th Cir. 2001) ("'The determination as to whether or

7

The Court notes that Plaintiffs were not particularly diligent in filing the instant motion to
strike. The SICs were served on Plaintiffs on December 27, 2021; the instant motion was not
filed until January 21, 2022. In addition, the relief sought by Plaintiffs in their motion—that
Defendants be ordered to serve a revised expert report by February 1, 2022—was wholly
unrealistic, given that it would have left six business days for the motion to be briefed, the Court
to issue a ruling, and the revised expert report to be prepared.
7

not parties should be held to pretrial orders is a matter for the discretion of district court
judges.'") (quoting Sadowski v. Bombardier Limited, 539 F.2d 615, 621 (7th Cir. 1976)). As
noted above, the Court would have granted Defendants' motion to modify the 24-reference limit
had they filed it prior to serving their SICs, and any prejudice to Plaintiffs that resulted from their
failure to do so was minimal. Because the Court finds good cause to permit Defendants to assert
the prior art references that are contained in their SICs, the Court GRANTS them leave to do so,
regardless of whether those references are properly counted as more than 24.
For the reasons set forth above, Plaintiffs' Motion to Strike Defendants' Supplemental
Invalidity Contentions [Dkt. 573] is DENIED and Defendants' Conditional Motion for Leave to
Exceed a Limit of 24 Prior Art References to the Extent the Court Finds (1) That Such a Limit
Applied to Cook's December 2021 Invalidity Contentions, and (2) That Cook Exceeded This
Limit [Dkt. 582] is GRANTED. Neither party is entitled to fees with regard to the instant
motions.
SO ORDERED.

Dated: 3 MAR 2022

Distribution:
Service will be made electronically on all
ECF-registered counsel of record via email
generated by the Court's ECF system.
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