EAGLE VIEW TECHNOLOGIES, INC. et al v. XACTWARE SOLUTIONS, INC. et al

Filing 329

OPINION FILED. Signed by Magistrate Judge Joel Schneider on 11/29/17. (js)

[Doc. Nos. 282, 293]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW JERSEY
CAMDEN VICINAGE
EAGLE VIEW TECHNOLOGIES, INC.,
et al.,
Civil No. 15-7025 (RBK/JS)

Plaintiffs,
v.
XACTWARE SOLUTIONS, INC. et
al.,
Defendants.
OPINION

This case is a classic example of the mischief that occurs
when a party does not faithfully follow the requirements in the
Local Patent Rules. As will be explained in more detail, as a
result of plaintiffs’ incomplete infringement contentions, and
plaintiffs’ four (4) versions of their answer to defendants’ key
interrogatory 7, the Court is now unfortunately compelled to
wade

through

the

parties’

mind-numbing

arguments

and

decide

defendants’ Motion to Strike New Infringement Theories and New
Invention and Priority Dates [Doc. No. 282], and plaintiffs’
Cross-Motion

to

Amend

[Doc.

No.

393].

The

Court

held

oral

argument on October 5 and 18, 2017, and pored over scores of
technical and contention documents to get to the bottom of the

1

complicated issues in dispute. For the reasons to be discussed,
the parties’ motions will be granted in part and denied in part.
Background
Plaintiffs
September

23,

filed
2015.

this
The

patent

patents

infringement

are

generally

action

on

directed

to

software technology for imaging, modeling and rendering aerial
rooftop

measurements

and

reports.

Plaintiffs

and

defendants

compete in this market. At present, seven (7) patents are at
issue.
After the December 9, 2015 Fed. R. Civ. P. 16 scheduling
conference, the Court’s Scheduling Order mirrored the deadlines
in the Local Patent Rules. Plaintiffs served their infringement
contentions

on

December

23,

2015.

After

the

Court

granted

plaintiffs’ motion to amend infringement contentions on October
28, 2016 [Doc. No. 139], plaintiffs served their first amended
infringement

contentions

on

November

4,

2016.

Not

being

satisfied that the contentions supplied the necessary details
required by the Local Rules, defendants attempted on numerous
occasions

to

try

and

convince

plaintiffs

to

serve

fulsome

contentions. Defendants’ efforts were unsuccessful. 1 Justifiably
not

being

satisfied

that

plaintiffs’

infringement

contentions

were adequate, and that plaintiffs wrongfully insisted on taking
1

Plaintiffs eventually relented and agreed to supplement their
contentions but only after they took defendants’ deposition. The
Court ruled plaintiffs’ contentions had to be supplemented
before the deposition was taken.
2

defendants’
Rules,

deposition

defendants

before

filed

they

their

complied

“Motion

with

to

the

Compel

Local
Amended

Infringement Contentions to Comply with Local Patent Rule 3.1”
[Doc. No. 158] on January 27, 2017. In short, defendants argued
plaintiffs’ infringement contentions lacked required detail and
specificity,

they

provided

no

explanatory

text

or

narrative

analysis as to how or why the accused products infringed the
asserted claims, or how plaintiffs’ screenshots demonstrated the
alleged infringement required by L. Pat. R. 3.1. See Defendants’
Memorandum in Support of Motion at 1, Doc. No. 159. Defendants
argued plaintiffs simply provided “picture books” without the
textual

analysis

required

by

the

Local

Rules,

and

required

defendants to guess at plaintiffs’ infringement theories. Id.
Not

surprisingly,

infringement
Plaintiffs

plaintiffs

contentions
argued,

disagreed

complied

“there

is

no

with

and

insisted

the

question

Local

that

their
Rules.

Plaintiffs’

contentions meet the standards of this District’s Local Patent
Rules.” Plaintiffs’ Opposition at 1, Doc. No. 183.
On May 1, 2017, the Court held oral argument on defendants’
Motion

to

expressed

Compel
its

and

dismay

at

issued

its

plaintiffs’

Oral

Opinion.

position

and

The
ruled

Court
that

plaintiffs’ contentions were plainly deficient. See Transcript
of May 1, 2017 Oral Argument at 42:7 – 53:1, Doc. No. 231. What
was unsettling was the fact that even though plaintiffs argued
3

their contentions were sufficient, plaintiffs’ briefs provided
explanatory text not included in their contentions. Plaintiffs
also

acknowledged

source

code

citations

were

available

to

supplement their contentions that they did not identify. Thus,
plaintiffs

essentially

acknowledged

they

did

not

produce

the

fulsome infringement contentions the Local Rules require. Id. at
51:2-20.

The

Court

agreed.

defendants’

Motion

to

Compel

Importantly,

the

Court

The
on

merely

Court,
May

2,

granted

therefore,
2017,

Doc.

plaintiffs

granted
No.

213.

leave

to

“supplement” their deficient contentions. On the same day the
Court

granted

defendants’

motion

to

amend

their

invalidity

contentions to add the Sungevity reference as prior art. See May
2, 2017 Order, Doc. No. 212.
Purporting to comply with the May 1, 2017 Order, plaintiffs
served

their

amended

supplemental

infringement

contentions

on

June 6, 2017. Plaintiffs also served a supplemental answer to
defendants’ interrogatory 7 on July 12, 2017, and amended the
answer on July 19, 2017. Not coming as a surprise, defendants
object to plaintiffs’ supplement/amendment to their infringement
contentions and July 12 and 19, 2017 answers to interrogatory 7.
Defendants

argue

instead

of

supplementing,

plaintiffs

amended

their contentions and required L. Pat. R. 32(b) disclosures. 2

2

By way of example, defendants point out that plaintiffs’
original and first amended contentions did not cite any Xactware
document or portion of source code. Defts.’ Memo. at 9. However,
4

Defendants’ present motion argues plaintiffs cannot show good
cause

to

amend

and

seeks

to

amendments.

Defendants

argue

substantive

technical

and

strike

portions

plaintiffs
legal

of

served

plaintiffs’

“entirely

theories.”

new

Defendants’

Memorandum (“Defts.’ Memo.”) at 5-6, Doc. No. 282. Defendants
claim

plaintiffs

infringement

theories

served
that

“drastically
differ

new

substantially

substantive
from

those

previously disclosed for a number of claim elements.” Id. at 6.
Defendants’ specific objections and requested relief seeks
to strike references to the following:
• Plaintiffs’ doctrine of equivalents theories;
• Plaintiffs’ theories pursuant to 35 U.S.C. § 271(f)-(g);
• Plaintiffs’ “ground point” theory offered in the
‘436 patent infringement contentions;
• Plaintiffs’ “aerotriangulation” theory offered in the
‘436 patent infringement contentions;
• Plaintiffs’ “aerotriangulation” theory offered in
patent infringement contentions, particularly for
the “receiving an indication of a feature” and “modifying
a three-dimensional model” limitations;
• Plaintiffs’ citations to Xactware source code Batesnumbered higher than XWSC648;
• Plaintiffs’ amended L. Pat. R. 3.2(b) disclosures listed
in their July 12 and 19, 2017 supplemental answers to

the June 6, 2017 contentions at issue contained approximately
1,693 citations to Xactware source code and 4,151 citations to
non-source code documents. Id. at 10. In addition, the June 6,
2017 contentions added an additional 408 pages of contentions
and 25 citations to documents produced by plaintiffs. See
Defts.’ October 5, 2017 Slide 5.
5

interrogatory 7 regarding documents and source code
evidencing conception and reduction to practice; and
• New conception and reduction to practice dates
included in plaintiffs’ July 12 and 19, 2017 answers to
interrogatory 7.
Plaintiffs’ Cross-Motion to Amend seeks leave of court to assert
the foregoing matters in the event the Court deems leave is
necessary.
Insofar as the general status of the case is concerned, the
Markman hearing was recently held and the parties are awaiting
the ruling. The fact discovery deadline expires on December 28,
2017, and no expert reports have been produced. No trial date
has been set.
Discussion
1.

May 1, 2017 Ruling

Since plaintiffs mis-read the Court’s May 1, 2017 ruling
and accompanying May 2, 2017 Order, the Court’s analysis starts
with what it did and did not Order. To the extent plaintiffs
assume

the

Court

granted

them

carte

blanche

to

amend

their

infringement contentions they are dead wrong. Plaintiffs were
only granted leave to supplement their contentions to comply
with the Local Rules. Plaintiffs are well aware that in order to
amend

contentions

a

motion

to

amend

must

be

filed.

Horizon

Pharma AG v. Watson Laboratories, Inc. – Florida, C.A. No. 135124

(JEI/JS),

2015

WL

12850575,

at

*2

(D.N.J.

Feb.

24,

2015)(“New Jersey L. Pat. R. 3.7 provides that contentions may
6

only

be

amended

application
dispense

and

upon

Order

showing

of

of

good

with

Local

Rule

3.7.

to

comply

with

the

plaintiffs

the

Court

cause.’”)
Instead,
Local

‘upon

The
the

Rules

a

Court

timely
did

Court

not

directed

requiring

fulsome

contentions. The Court could not have granted plaintiffs carte
blanche to amend because it did not have a record on which to
determine if good cause existed.
If, as plaintiffs seem to argue, they were free to amend
their

contentions

mandatory

nature

at
of

their
the

leisure,

Local

it

Rules.

would

If

the

minimize
Court

the

accepted

plaintiffs’ argument plaintiffs could amend without good cause
simply by serving deficient infringement contentions and waiting
for

their

adversary

to

ask

for

a

supplement.

This

is

unacceptable. The Court agrees with defendants that what the
Court directed at the May 1, 2017 hearing and in its May 2, 2017
Order was that plaintiffs “would supplement their contentions to
provide additional information and detail, not add entirely new
theories of infringement.” Defendants’ Reply (“Defts.’ Reply”)
5-6, Doc. No. 298 (emphasis removed). See also Tr. at 52:12-13
(“We’ll give plaintiffs a reasonable time to supplement their
contentions. [Plaintiffs will] rise or fall with them.”) 3

3

In fact, plaintiffs represented they only “want[ed] to
supplement [their] contentions to include [a] second layer of
detail.” Tr. 43:24-44:1, 44:10-ll. Plaintiffs did not ask for
leave to amend to assert new theories.
7

Having
leave

to

made

it

clear

supplement

contentions,

the

plaintiffs’

changes

that

but

Court
fit.

plaintiffs

not

must

were

amend
decide

Admittedly,

only

their
into

the

infringement
what

line

granted

is

category

not

always

clear. However, supplementary disclosures “do not permit a party
to introduce new opinions after the disclosure deadline under
the

guise

of

a

supplement.”

Medtronic

Inc.

v.

Edwards

Lifesciences Corp., Case No. SACV 12-00327-JFV (MLGx), 2013 WL
12131746, at *2 (C.D. Ca. July 24, 2013)(citation and quotation
omitted). Claims and issues which should have been included in
plaintiffs’

original

contentions

may

not

be

added

under

the

guise of a supplement. See Plumley v. Mockett, 836 F. Supp. 2d
1053, 1062 (C.D. Ca. 2010).
If
their

the

Court

determines

contentions,

plaintiffs

defendants’

motion

merely

will

be

supplemented

denied

because

plaintiffs will be in compliance with the Court’s Order. If the
Court decides plaintiffs amended rather than supplemented their
contentions, the Court must then decide whether plaintiffs show
good cause for the amendment. If good cause does not exist,
plaintiffs’ Motion to Strike will be granted and defendants’
Cross-Motion to Amend will be denied.
The

standard

to

establish

good

cause

to

amend

is

well

established. The key factor courts look at is the diligence of
the

moving

party.

O2

Micro

Intern.
8

Ltd.

v.

Monolithic

Power

Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). Diligence has
two

aspects

to

it.

One

is

whether

the

moving

party

acted

diligently to discover that an amendment was appropriate. The
second

aspect

amend

its

is

whether

contentions

the

moving

after

it

party

promptly

learned

an

moved

amendment

to
was

necessary. See generally id.; AS America, Inc. v. Masco Corp. of
Indiana, C.A. No. 13-05 (JBS/JS), 2013 WL 4084237, at *2 (D.N.J.
Aug.

13,

2013).

Other

factors

courts

consider

to

determine

whether good cause exists to grant an amendment are: (1) the
reason

for

reasonable

the

delay,

control

of

including
the

party

whether

it

responsible

was
for

within
it;

(2)

the
the

importance of what is to be excluded; (3) the danger of unfair
prejudice; and (4) the availability of a continuance and the
potential impact of a delay on judicial proceedings. LMT Mercer
Group, Inc. v. Maine Ornamental, LLC, C.A. Nos. 10-4615, 10-6699
(FLW), 2014 WL 2842338, at *6 (D.N.J. Jan. 24, 2014); see also
Oyajt Ltd. v. Vatech Amer., Inc., C.A. No. 10-4875 (PGS/DEA),
2012 WL 1067900, at *20 (D.N.J. March 29, 2012). Only if the
court finds diligence does it need to determine if the non-party
would suffer prejudice as a result of an amendment. LMT Mercer
Group, at *6.
2.

Plaintiffs’ Supplements/Amendments

The

Court

will

separately

requests.
9

address

each

of

defendants’

A.

Doctrine of Equivalents Theories

L. Pat. R. 3.1(e) requires a plaintiff to identify whether
a

limitation

is

asserted

to

be

met

literally

or

under

the

doctrine of equivalents (hereinafter “DOE”), “[n]ot later than
14

days

after

the

Initial

Scheduling

Conference.”

Defendants

argue plaintiffs’ December 23, 2015 contentions and November 4,
2016 amended contentions did not contain any DOE contentions.
According to defendants, plaintiffs did not add their DOE theory
until

their

second

amended

contentions

on

June

6,

2017.

Plaintiffs added allegations regarding DOE for only two specific
claim requirements. The “memory” and “roof estimation module”
references in claim 1 of the ‘436 Patent and claim 10 of the
‘840

Patent.

Defendants

ask

the

Court

to

strike

these

contentions because plaintiffs cannot show good cause to amend.
Specifically, defendants argue plaintiffs did not act diligently
and they will be prejudiced by the amendment.
Plaintiffs respond by pointing out their November 4, 2016
amended contentions stated, “Xactware has directly infringed and
continues to directly infringe, either literally or under the
doctrine

of

equivalents

claims

…

of

the

‘436

Patent[.]”

See

Exhibit 1 4 at 3. 5 In addition, plaintiffs’ L. Pat. R. 3.1(c)

4

Citations to numbered exhibits refer to the exhibits attached
to the Declaration of Scott S. Christie, Esquire in support of
defendants’ Motion to Strike [Doc. No. 281-5]. Citations to
lettered exhibits refer to the exhibits attached to the
10

chart reserved the right to supplement plaintiffs’ contentions
as to the DOE. See Exhibit 4 (“Plaintiffs further reserve the
right

to

supplement

these

contentions

as

to

the

Doctrine

of

Equivalents[.]”)
In
that

response

plaintiffs

to

plaintiffs’

never

arguments

articulated

any

defendants

DOE

theory

counter
for

any

limitation of any asserted claim for any patent. And, therefore,
plaintiffs’ new DOE theories are entirely new. Defts’ Reply at
8. Defendants also argue good cause does not exist to grant
plaintiffs’ DOE amendment.
The
theories

Court
are

agrees

new.

with

defendants

Plaintiffs’

first

that

plaintiffs’

(December

23,

DOE

2015)

and

second (November 4, 2016) infringement contentions provided no
substantive information regarding their DOE theories and merely
included

general

boilerplate.

Plaintiffs

did

not

provide

the

detailed, limitation-by-limitation DOE contentions required by
the

Local

Rules.

Plaintiffs’

boilerplate

amounted

to

a

reservation of their right to assert a DOE theory. This is not
permitted.

As

noted

in

Howmedica

Osteonics

Corp.

v.

Depuy

Orthopaedics, Inc., C.A. No. 11-6498 (SDW), 2014 WL 6675923, at
*4 (D.N.J. Nov. 24, 2014, “[t]he Local Patent Rules … demand of
Declaration of Liza M. Walsh, Esquire [Doc. No. 293-1] submitted
in support of defendants’ Response and Cross-Motion.
5 See also id. at 6 (“The chart attached as Exhibit A shows that
each limitation of each asserted claim of the ‘436 Patent is
literally present in the accused products or is present under
the Doctrine of Equivalents.”)
11

the

patentee

theories

of

Howmedica

precision

and

infringement,

the

struck

specificity

including

Stryker’s

in

DOE.”

general

identifying
This

is

reservation

why

of

its
in

rights

that was included in its infringement contentions. Id. at *2.
(“Stryker’s

failure

infringement

to

theory

specifically

either

in

its

delineate
original

its

DOE

Infringement

Contentions or via amended contentions precludes Stryker from
asserting that theory [.]”). Id. The Local Rules do not permit
parties

to

“reserve”

a

DOE

theory

so

they

can

“supplement”

rather than amend later. “[I]t would seem self-evident that a
mere

reservation

of

the

right

to

assert

the

doctrine

of

equivalents is insufficient to satisfy the exacting requirements
of L. Pat. R. 3.1.” Id. at *5; see also Thought, Inc. v. Oracle
Corporation, et al., Case No. 12-cv-05601-WHO, 2015 WL 5834064,
at *6 (N.D. Ca. Oct. 7, 2015)(“[Plaintiffs’] desire to add the
DOE

theory

considered

to

its

infringement

‘supplementation’

to

contentions
the

is

infringement

not

properly

contentions,

but is instead an amendment…. [C]ourts regularly treat additions
of DOE argument in motions to amend contentions[.]”) Therefore,
having determined that plaintiffs are seeking to amend rather
than supplement their DOE theories, the Court must determine if
plaintiffs demonstrate good cause to amend.
Plaintiffs are seeking to assert their new DOE theories 17
months after their December 2015 infringement contentions and 7
12

months after their November 2016 first amended contentions. The
Court finds that plaintiffs did not act diligently to assert
their DOE theories and, therefore, good cause to amend is not
established. Defendants’ initial non-infringement position with
regard to “memory” and “roof estimation module” stated that the
accused products did not “include[] a roof estimation module
that is stored on the memory.” See Exhibit G at 1. In April
2016, defendants proposed a construction that required “a single
software

module.”

Exhibit

F

at

7.

Plaintiffs

should

have

included their DOE theory in their December 2015 infringement
contentions. At the latest, however, in response to defendants’
April 2016 position plaintiffs could have and should have moved
to assert a DOE theory. Instead, plaintiffs argue, out of an
abundance of caution they included the DOE theory in June 2017
even

though

defendants

dropped

the

construction

in

February

2017. Plaintiffs’ Response (“Pltfs.’ Response”) at 18, Doc. No.
293. Plaintiffs argue they “included [their] DOE position in
case Defendants later attempted to rely on the ‘single’ module
argument.” Id.
Plaintiffs’

arguments

are

not

convincing.

If

plaintiffs

acted diligently they would have asserted their DOE theories in
December 2015 or at the latest shortly after April 2016. They
should not have waited until over a year later when they served
their second supplemental/amended contentions in June 2017 to
13

include their DOE theories. See, e.g., Apple Inc. v. Samsung
Elecs. Co., Ltd., No. 12-cv-0630-LHK (PSG), 2013 WL 3246094, at
**2-4 (N.D. Cal. June 26, 2013)(rejecting request to add DOE
theories for asserted patents in response to non-infringement
theories). What is also noteworthy is the fact that defendants
repeatedly pointed out to plaintiffs the deficiencies in their
contentions. Nevertheless, plaintiffs erroneously insisted their
contentions were adequate. It should not take a motion to compel
and a Court Order to require sophisticated patent litigation
parties and lawyers to provide timely fulsome contentions. If
plaintiffs acted diligently they would have asserted their DOE
theories more than a year before their June 2017 contentions.
The Court acknowledges and agrees with defendants’ argument:
There are no changed circumstances here that would
support a finding of good cause. No adverse claim
construction order has issued; plaintiffs do not cite
any newly discovered evidence necessitating their
belated DOE disclosures; and no other circumstance
exists that could remotely excuse or even explain
plaintiffs’ year-plus-long refusal to disclose any
substantive DOE theories.
Defts’ Reply at ll. 6 The Court also agrees with Howmedica, at *5,
where the Court stated: “[a] patentee cannot be permitted to
assert a general DOE theory of infringement and then proffer a
more specific DOE theory whenever it becomes convenient for it
to

do

so.

To

allow

such

a

practice

6

would

be

to

place

the

The Court need not decide if defendants are prejudiced by
plaintiffs’ DOE amendment because it finds plaintiffs did not
act diligently to assert the theory.
14

adversary in the position of having to constantly guess at the
contours of the patentee’s infringement theories.”
Plaintiffs repeatedly argue their June 2017 contentions are
appropriate because they complied with the Court’s direction at
the May 1, 2017 oral argument to “put all [Plaintiff’s] cards on
[the]

table.”

Tr.

at

46:11-15.

The

problem

with

plaintiffs’

argument is that the Court was simply reminding plaintiffs of
their duty under the Local Patent Rules. It could not be clearer
that parties are required to serve fulsome contentions as early
as possible. Merck Sharp & Dohme Corp. v. Sandoz, Inc., C.A. No.
12-3289 (PGS)(LHG), 2014 WL 1494592, at *8 (D.N.J. April 16,
2014)

(“[T]he

Local

Patent

Rules

strive

contentions

early

on”)(citation

establish

their

omitted);

Celegne

Corp.

v.

Natco

Pharma

to

have

the

and

Ltd.,

parties

quotation

C.A.

10-5197

(SDW)(SCM), 2015 WL 4138982, at *4 (D.N.J. July 9, 2015)(“The
Local

Patent

Rules

are

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.”)(citation and quotation omitted). Plaintiffs did not
need to be reminded of their obligations under the Local Patent
Rules.

The

Court’s

reminder

does

not

excuse

plaintiffs

doing what they should have done in the first instance.
B.

Plaintiffs’ Theories Pursuant to 35 U.S.C '271
(f)-(g)

15

from

Defendants
theories

argue

based

on

plaintiffs
35

assert

new

'271(f)-(g)

U.S.C

infringement

which

address

extraterritorial activity. Defendants argue the theory must be
stricken because plaintiffs should have pursued these theories
as

early

as

September

2016

based

on

defendants’

document

production showing reliance on outsourcing from India and China. 7
In response plaintiffs argue they simply provided details
where the infringement activity is occurring, and was made in
response to defendants’ May 9, 2017 supplemental interrogatory
response

that

defendants’

allegedly

infringing

contended
activity

for

the

occurred

first

time

outside

the

that
United

States. Pltfs.’ Response at 20-21. Plaintiffs emphasize until
defendants’ May 9, 2017 supplement defendants indicated in their
February

29,

2016

interrogatory

answers

that

all

research,

design, etc. occurred in Lehi, Utah. Id. at 22.
'271(f)-(g)

Plaintiffs’

theories

are

plainly

amendments

rather than supplements because the theories are new. However,
the Court still finds plaintiffs have demonstrated good cause to
assert
shortly

these
after

new

theories.

defendants

Plaintiffs’
supplemented

amendment
their

was

made

interrogatory

answers on May 9, 2017 to specifically identify their foreign
activities.

Prior

to

that

time

7

plaintiffs

could

legitimately

Defendants provided a list of documents referencing their
overseas operations that were produced before September 1, 2016.
Exhibit 19.
16

rely on defendants’ February 29, 2016 interrogatory answer that
defendants’ activities were focused in Utah. See Exhibit I at
10.
The
revealed
reason

Court

is

foreign
to

rely

information
defendants

aware

activity.
on

some

February

of

Nonetheless,

defendants’

supplemented
on

that

on
29,

May
2016.

defendants’

documents

plaintiffs

had

every

interrogatory

answers.

9,

available

The

2017

was

Court

will

not

The
to

permit

defendants to benefit because their February 29, 2016 answers
were not accurate and they waited over a year to supplement
their

answers

with

complete

information.

See

Fed.

R.

Civ.

26(g)(a party’s signature to an interrogatory answer certifies
that any disclosures were complete and accurate at the time they
were made and a reasonable investigation was done). Further,
defendants make no credible argument they will be prejudiced by
plaintiffs’ amendment.
C.

“Ground Point” Theory – ‘436 Patent

Defendants seek to strike plaintiffs’ theories labeled (1)
and (3) for how the “correlate” limitation in the ‘436 patent is
met. See Exhibit 2, Exh. A at 27. Defendants argue plaintiffs
cannot show good cause to assert three distinct theories, only
one of which was previously disclosed. Defts.’ Memo. at 6-7.
According to defendants, the documents to support plaintiffs’
new theories were available since April 2106 and, therefore,
17

plaintiffs

were

not

diligent

in

asserting

their

contentions.

Defendants also argue plaintiffs are limited to the disclosures
they

made

in

their

response

to

defendants’

Motion

to

Compel

which does not include the alleged new theories.
Plaintiffs’

response

to

defendants’

argument

is

not

surprising. Plaintiffs argue they produced the detail defendants
requested, they are not presenting whole new theories, and their
second supplemental contentions provide an explanation of three
related mechanisms. At bottom, plaintiffs argue they “provided
exactly what was requested, which was further detail concerning
how [the] limitation was met and did so by focusing on the same
accused

instrumentalities.”

Plaintiffs’

Reply

Pltfs.’

(“Pltfs.’

(Plaintiffs’

“supplemental

technical

narratives

Response

Reply”)

contentions
explaining

at

4,

at

Doc.

provided
how

14;

see
No.

the

also
310.

detailed

the

accused

instrumentalities infringe, as requested by Defendants.”)
As to defendants’ “ground point” argument the decision is a
close call as to whether plaintiffs supplemented or amended. On
the whole, however, the Court sides with plaintiffs that they
provided the detail defendants requested. Defendants’ Motion to
Compel asked the Court to require plaintiffs to identify “what
‘correlate’ means, what constitutes ‘correlating,’ or what ‘the
correlation’

is.”

See

Defendants’

January

4,

2017

Letter

to

Plaintiffs at 3, Doc. No. 159-13. Plaintiffs produced what was
18

demanded. Defendants complained that plaintiffs did not explain
how the accused products met the “correlate” limitation and how
their screenshots are linked to or demonstrated infringement of
the corresponding claim limitations. Defts.’ Memo. in Support of
Motion

to

Compel

at

7.

This

is

the

detailed

explanation

plaintiffs provided in their supplement. For present purposes
the Court credits plaintiffs’ argument that they responded to
the Court’s Order to “include narrative details identifying the
specific components and functionality in the accused products
that meet each claim limitation[.]” Pltfs’ Reply at 1; see also
Pltfs.’ Response at 10-11. (“[T]hese are not new theories but
interrelated mechanisms used by Defendants to perform the claim
elements

at

issue,

in

the

very

same

aspects

of

the

same

instrumentalities accused of infringement all along.”) The Court
does not credit defendants’ argument that plaintiffs are limited
to the explanations in their earlier Briefs. The Court did not
ask for, and plaintiffs did not intend to, provide exhaustive
descriptions of their contentions. 8
D.

“Aerotriangulation” Theories –‘436 and ‘153
Patents

The Court’s decision as to defendants’ request to strike
plaintiffs’ “aerotriangulation” theory offered in the ‘436 and

8

Further, defendants have not made a convincing case they are
prejudiced by plaintiffs’ supplement in view of the fact that no
expert reports have been produced and defendants have time to
prepare their case before the fact discovery deadline expires.
19

‘152 patents, particularly for the “receiving an indication of a
feature” and “modifying a three-dimensional model” limitations,
is the same as for the “ground point” theory argument. Although
a close call, the Court finds plaintiffs supplemented rather
than amended their contentions. The Court also finds no material
prejudice will result from the supplement.
E.

Xactware Source Code Citations

Plaintiffs’

initial

and

first

amended

infringement

contentions did not cite to a single line of Xactware source
code. 9 The June 6, 2017 second supplemental contentions added
approximately 1,693 citations. These contentions were based in
part on 228 pages of source code plaintiffs printed after May 1,
2017.

Defendants

argue

the

Court

should

strike

plaintiffs’

references to source code that was obtained after May 1, 2017.
Defendants argue, and the Court agrees, that the Court’s May 2,
2017 Order directed plaintiffs to supplement their contentions
with the information they already had. The Court did not give
plaintiffs a license to conduct a new search so they could in
effect amend their contentions and cure any deficiencies from
their first source code review.
Plaintiffs

argue

they

produced

precisely

what

defendants

asked for, i.e., pinpoint citations to source code. However,

9

This is remarkable considering the fact plaintiffs reviewed
defendants’ source code on 27 different days before August 5,
2016. See discussion infra.
20

plaintiffs

overreach.

plaintiffs

to

unexplained

produce

Defendants’
narrative

screenshots

Motion

text

allegedly

to

Compel

articulating

showed.

asked

what

Implicit

their

in

this

request was the condition that plaintiffs’ supplement would be
based

on

the

Consequently,

information

the

Court

plaintiffs

rules

that

already

plaintiffs’

possessed.
citation

to

source code obtained after May 1, 2017 is an amendment. The
Court rejects plaintiffs’ argument that their additional review
of

defendants’

Court’s

source

order[.]”

code,

Pltfs.’

“was

directly

Response

at

16.

responsive
As

to

already

the

noted,

plaintiffs were granted leave to supplement, not amend.
As to the post-May 1, 2017 source code citations, the Court
has no trouble finding that plaintiffs cannot establish good
cause for the amendments. This is so because plaintiffs were not
diligent in obtaining the source code they are now relying on.
All of the Xactware source code plaintiffs obtained after May 1,
2017

was

available

before

May

1,

2017.

If

plaintiffs

acted

diligently they would have obtained all of the source code they
needed before May 1, 2017.
Defendants’ log of plaintiffs’ source code review supports
the

Court’s

ruling.

See

Exhibit

18.

Plaintiffs

reviewed

defendants’ source code on approximately 27 different days from
April

28,

2016

to

August

5,

2016.

Through

August

5,

2016,

plaintiffs printed 648 pages of Xactware source code. However,
21

after the Court’s May 2, 2017 Order, plaintiffs went back and
reviewed the source code on six (6) more days from May 11, 2017
to

June

2,

2017,

and

printed

an

additional

228

pages.

If

plaintiffs acted diligently they would have obtained all the
source code they needed as of August 5, 2016. The fair inference
from plaintiffs’ 2017 review is they wanted to be sure their
citations were complete. Unfortunately for plaintiffs, however,
the Local Rules do not give them an automatic “second bite at
the apple” in the absence of a showing of diligence. Since the
source code plaintiffs printed in May/June 2017 was available to
plaintiffs

before

justifiable
obtained

May

explanation

and

cited

obtaining

the

228

Therefore,

since

1,

2017,

for

why

earlier,
pages

the

plaintiffs
new

plaintiffs

they

plaintiffs

and

do

source
were

obtained
not

show

code

not

in
good

provided
was

diligent

no
not
in

May/June

2017.

cause

amend

to

their contentions to cite to source code obtained after May 1,
2017, plaintiffs’ amendment citing the source code in the 228
pages is stricken. Defendants represent this is the source code
Bates-stamped higher than XWSC648.
F.

New Invention and Alternative Priority Dates, and
New Invention Dates

(1)

Priority Dates

L. Pat. R. 3.1 requires initial infringement contentions to
disclose, “[f]or any patent that claims priority to an earlier
application,

the

priority

date
22

to

which

each

asserted

claim

allegedly
priority

is

entitled.”

dates

Defendants

also

have

Defendants

shifted

complain

complain

over

time.

plaintiffs

that

Defts.’

improperly

plaintiffs’
Memo

at

reserved

3.
the

right to rely on one of two priority dates for several patents.
Id.

Defendants

priority

dates

contentions

argue

that

they

rather

if

must
than

plaintiffs

file

a

want

motion

through

to

to

responses

assert
amend

to

new

their

Xactware’s

invalidity contentions and supplemental interrogatory answers.
Ultimately,

defendants

argue,

plaintiffs

cannot

amend

because

they were not diligent.
Defendants

challenge

plaintiffs’

priority

dates

for

the

‘436 patent on the ground they changed. Plaintiffs disagree and
argue their priority dates have remained essentially the same.
The Court agrees with plaintiffs. Plaintiffs have demonstrated
that

their

asserted

priority

dates

have

remained

essentially

consistent in their December 23, 2015 infringement contentions
(Exh. 8 at 6), November 4, 2016 amended contentions (Exh. 1 at
6), and June 6, 2017 second amended contentions (Exh. A at 12). 10
To the extent defendants argue plaintiffs are barred from
asserting alternative priority dates the Court disagrees. See
Ajinomoto Co. Inc. v. Int’l Trade Comm’n, 597 F.3d 1267, 1277
(Fed. Cir. 2010)(“A patentee may seek to rely on an earlier

10

Defendants may fail to recognize that their interrogatory 7
only asked for the earliest priority date, not all possible
alternatives. Exh. 12. at 2.
23

priority date to overcome intervening prior art …. A patentee
may also argue in the alternative for different priority dates
at trial”); accord Collaborative Agreements, LLC v. Adobe Sys.,
Inc., No. 15-cv-3853-EMC, 2016 WL 1461487, at *2 (N.D. Cal. Apr.
17, 2016)(plaintiff “could have claimed various priority dates”
in the alternative….) Defendants argue plaintiffs must file a
motion to amend their invalidity contentions to amend a priority
or invention date rather than amending interrogatory answers.
However,

since

defendants

acknowledge

the

issue

is

the

same

(Defts.’ Memo. at 30), and plaintiffs filed a Cross-Motion to
Amend, the Court will not require plaintiffs to formally include
(if

not

already

done)

the

substance

of

their

response

to

interrogatory 7 in their amended infringement contentions.
(2)

Invention Dates and Document Disclosures

Defendants’
response

is

invention

not

easy

to

date
grasp.

arguments
Part

of

the

and

plaintiffs’

problem

is

the

parties’ arguments involve the interplay of the Local Patent
Rules

and

plaintiffs’

multiple

answers

to

defendants’

interrogatory 7. As opposed to L. Pat. R. 3.1(f) which requires
the

disclosure

“[f]or

any

patent

that

claims

priority

to

an

earlier application, the priority date to which each asserted
claim

allegedly

is

entitled,”

the

Local

Rules

do

not

specifically require the disclosure of specific conception and
reduction to practice dates. Instead, L. Pat. R. 3.2(b) requires
24

the

production

of

“[a]ll

documents

evidencing

the

conception

[and] reduction to practice … of each claimed invention.” These
documents must be produced 14 days after the initial scheduling
conference

with

Infringement

the

“Disclosure

Contentions.”

On

of

Asserted

December

23,

Claims

2015,

and

plaintiffs

served their infringement contentions and responsive Rule 3.2(b)
disclosures for all seven patents. 11
In order to obtain specific conception and reduction to
practice

dates,

defendants

served

interrogatory

7

which

specifically asked plaintiffs to identify separately for each
asserted

claim

the

earliest

date

plaintiffs

contended

the

alleged invention was conceived and reduced to practice. Exh. 12
at

2

(emphasis

interrogatory

7

supplied).
on

February

Plaintiffs’
29,

2016

did

first
not

answer

to

identify

any

specific dates but instead referred defendants to their document
disclosures under L. Pat. R. 3.1, 3.2(b) and 3.2(c). Id. at 3. 12

11

Relying on authority from outside New Jersey, the Court
acknowledges
defendants
argue
plaintiffs
are
required
to
specifically set forth their conception and reduction to
practice dates similar to what is required for priority dates.
See Defts.’ Memo at 27-28. However, defendants have not cited a
New Jersey case that adopts this position.
12
The Court questions the appropriateness of plaintiffs’
reliance on Rule 33(d) which provides a party may answer an
interrogatory by producing its business records. This may only
be done if “the burden of deriving or ascertaining the answer
[is] substantially the same for either party[.]” The Court
suspects, but is not certain, that the burden to review the
produced inventor’s notebooks was substantially more difficult
for defendants than it was for plaintiffs. This is demonstrated
by the fact that plaintiffs provided specific dates in their
25

At

the

response

behest
to

of

defendants,

interrogatory

7

plaintiffs

on

September

supplemented
9,

2016.

their

Id.

This

answer provides specific conception and reduction to practice
dates and identified additional documents responsive to L. Pat.
R.

3.2(b).

Plaintiffs

later

supplemented

their

answer

to

interrogatory 7 on July 12, 2017 (id. at 6) and July 19, 2017
(id. at 40). In July 2017, plaintiffs only produced additional
reduction

to

practice

documents,

not

conception

documents.

Transcript of October 18, 2017 Oral Argument (“Tr.2”) at 6:1725.
Defendants argue plaintiffs’ July 2017 dates differ from
their September 9, 2016 dates. Defendants also argue plaintiffs
produced new documents responsive to L. Pat. R. 3.2(b) in July
2017

that

should

have

been

produced

earlier

if

plaintiffs

exercised reasonable diligence. Plaintiffs argue they did not
change dates for the ‘436 patent but admit dates for their six
(6)

other

patents

were

changed.

Tr.2

35:15-19.

Plaintiffs

acknowledge new responsive documents were produced in July 2017,
but

argue

since

they

exercised

reasonable

diligence

the

supplemental production is appropriate.
Defendants’ motion directed to plaintiffs’ invention dates
raises several issues which will be separately addressed. These
September 9, 2016, July 12, 2017 and July 19, 2017 supplemental
answers to interrogatory 7. Nevertheless, defendants are not
seeking to strike plaintiffs’ December 23, 2015 answer to
interrogatory 7.
26

issues include the specific relief defendants request, whether
plaintiffs’ late produced documents and source code should be
stricken, and whether plaintiffs’ July 2017 new conception and
reduction to practice dates should be stricken.
(a) Requested Relief
The first important question to address is the specific
relief plaintiffs are requesting as to plaintiffs’ conception
and

reduction

motion

only

to

asked

practice
the

disclosures.

Court

to

strike

Although

defendants’

invention

dates

not

included in plaintiffs’ December 2015 infringement contentions,
defendants later acknowledged they do not object to plaintiffs’
September 2016 supplement to interrogatory 7. Tr.2 at 39:17-23.
Defendants,

however,

are

seeking

to

strike

the

alleged

new

invention dates for all seven patents asserted after this date,
i.e., the July 12 and 19, 2017 answers to interrogatory 7. Id.
at 29:11-13. In addition, defendants clarified they are not only
seeking to strike the new dates in plaintiffs’ July 2017 answers
to interrogatory 7, but also the new documents produced with
these answers. Defendants explain that to the extent this relief
was not specifically set forth it was an oversight. Defendants
argue they intended to strike plaintiffs’ supplemental document
production as “part and parcel” of their motion. Id. at 30:25 to
31:14. The Court credits defendants’ argument. The Court finds
the request to strike plaintiffs’ late document disclosures was
27

implicit

in

plaintiffs’

request

to

strike

the

new

invention

dates. It makes little sense to strike new invention dates but
not

the

late

produced

to

produced
support

documents
their

and

new

source

dates.

code

plaintiffs

Defendants’

motion

repeatedly criticizes plaintiffs for not disclosing the evidence
(i.e., documents and source code) they relied upon to support
the

invention

dates

in

their

September

9,

2016

answer

to

interrogatory 7. For example, defendants argued:
That Plaintiffs would withhold their evidence on which
their supplemental answer to Interrogatory No. 7 was
based in the face of a potential motion to compel,
only to sandbag Defendants with that evidence in the
closing
months
of
fact
discovery
smacks
of
gamesmanship. The Local Patent Rules prohibit it, and
Plaintiffs should be precluded from relying on these
late-disclosed invention dates.
Defts.’ Memo at 32. Defendants also argued: “Plaintiffs have had
the material they purport to rely on for years. It is hard to
comprehend

why

invention

dates

Plaintiffs
in

were

December

…

unable

2015.”

Id.

to

name

Thus,

it

these
is

[new]

apparent

defendants intended to strike plaintiffs’ newly cited documents
and source code as well as their new conception and reduction to
practice dates. Thus, for clarification purposes defendants are
seeking to strike the new conception and reduction to practice
dates identified in plaintiffs’ July 2017 interrogatory answers
for all seven patents. Defendants are also seeking to strike all
documents responsive to L. Pat. R. 3.2(b) that were produced in
July 2017.
28

(b)

Plaintiffs’ Late Document and Source Code
Production

The next important issue to address is whether plaintiffs
should be granted leave to amend or supplement their response to
interrogatory 7 to add the new documents they disclosed with
their July 2017 supplemental answers to interrogatory 7. In this
regard the Court is again required to apply L. Pat. R. 3.7 since
the Rule not only applies to amendments to contentions but also
to

“[a]mendment

of

any

…

disclosures,

or

other

documents

required to be filed or exchanged” pursuant to the Local Patent
Rules. Rule 3.7 applies because the new reduction to practice
documents

plaintiffs

produced

in

July

2017

were

originally

required to be produced in December 2015, and at the latest by
September

2016

when

interrogatory

7

disclosures.

Thus,

3.2(b)

plaintiffs

with

their

plaintiffs

disclosures

in

supplemented

July

L.

Pat.

did

not

supplement

but

instead

2017

R.

their

answers

3.2(b)

to

document

their

amended

Rule
their

disclosures. As noted, the key to showing good cause to amend
pursuant to L. Pat. R. 3.7 is that a party must act diligently
to discover that an amendment was appropriate. O2 Micro Intern.
Ltd., 467 F.3d at 1366; AS America, Inc., 2013 WL 4084237, at
*2.

The

Court,

therefore,

will

examine

plaintiffs’

diligence

with respect to the new documents they disclosed in July 2017.
Plaintiffs
July 2017.

disclosed

These

two

two

categories

categories
29

are

of

paper

new

documents

documents

and

in
old

Eagle View source code. (The “source code that was uncovered
from the – an earlier implementation of the invention … shows
reduction to practice of all of the patents.” Tr.2 at 9:4-9).
Plaintiffs

contend

their

late

production

was

caused

by

the

Court’s May 2, 2017 Order granting defendants leave to amend to
add

the

Sungevity

reference.

After

Sungevity

was

added

plaintiffs’ counsel, “asked folks to … look for materials that
they previously said were not in existence … and in places that
they felt were highly unlikely that had anything. And that’s how
these things were discovered.” Id. at 8:4-9. 13 Counsel added, “it
was

after

Sungevity

was

brought

in

that

we

did

that

extra

searching.” Id. at 8:10-12. When squarely presented with the
question why the July 2017 materials were not produced earlier
counsel stated, “relevant third-parties like the lead inventor
did not believe that other materials were in existence.” Id. at
10:11-14. According to counsel, when Sungevity came into play
counsel “asked the folks who [they] were working with to [double
check].” Id. at 10:16-18.
The Court finds that plaintiffs have not shown good cause
to amend their disclosures to include the documents, including
source code, disclosed in July 2017. In other words, plaintiffs

13

To be clear, although plaintiffs did a more vigorous search
after Sungevity was added to the case, not all of the new
documents address Sungevity. This is because Sungevity is only
asserted against the ‘436, ‘840 and ‘376 patents, not against
the other four patents. Tr.2 at 8:14-22.
30

have not satisfied their burden to show they acted diligently to
amend their L. Pat. R. 3.2(b) disclosure. 14 No good reason has
been given for why the documents disclosed in July 2017, could
not have been disclosed earlier if a diligent search was done. 15
As noted in Harvatek Corporation v. Cree, Inc., No. C14-05353
WHA, 2015 WL 4396379, at *3 (N.D. Cal. July 17, 2015), the
requirement that L. Pat. R. 3.2(b) documents be produced early
in a case “poses a minimal burden for a patent holder, who
should already know the conception date of a patented invention
prior

to

commencing

litigation.”

Although

it

is

plaintiffs’

burden to show they acted diligently, the only evidence they
submitted

to

support

their

Cross-Motion

to

Amend

was

the

conclusory August 25, 2017 Declaration of Gianni Cutri, Esquire
(Doc. No. 292-1), a partner at plaintiffs’ law firm. The sum and
substance of the Declaration is that after Sungevity was added
to

the

case

and

defendants

asked

for

more

information

about

invention dates, plaintiffs contacted “numerous third parties,
including

former

attorneys”

for

employee-inventors

more

information.

14

Id.

and
at

former
&4.

This

prosecution
conclusory

As
is
obvious,
plaintiffs
attempted
to
do
this
by
supplementing their answer to interrogatory 7 in July 2017.
15 It is not insignificant that until recently the inventor was
the Chief Technology Officer at Eagle View Technologies and an
officer of the company. Tr.2 28:24 to 29:4. It is also
noteworthy that this inventor did not find the relevant USB
drive located in his house in the Seattle area until July 2017.
See Defts.’ November 13, 2017 Letter Brief, Exh. A, Vol. 1, at
200:9-21, Doc. No. 328.
31

statement does not satisfy plaintiffs’ burden to show they acted
diligently to discover and produce documents responsive to L.
Pat. R. 3.2(b). Plaintiffs have not shown why the witnesses were
not contacted earlier. Simply stated, it should not have been
necessary for plaintiffs to “double-check” after Sungevity was
added to the case. A relevant case is Richtek Technology Corp.
v. uPI Semiconductor Corp., No. C09-05659 WHA, 2016 WL 4269095
(N.D.

Cal.

plaintiff’s

Aug.

15,

2016),

to

assert

request

where
a

the

new

Court

priority

denied

date

the

after

the

defendant successfully moved to amend its invalidity contentions
to address prior art. The Court reasoned that the Local Patent
Rules

contemplate

patent

owner

evidencing

a

application
discloses

must

specific
produce

conception

for

its

a

the

or
date

patent,

invalidity

sequence
make
prior

and

the

theories.”

of

disclosures

available
to

the

accused
Id.

all

at

date

–

documents
of

infringer

*2

“the

the
then

(emphasis

in

original).
It appears that what happened here is that plaintiffs did
not look very hard for documents responsive to L. Pat. R. 3.2(b)
until after May 2, 2017, when Sungevity was added to the case. 16
This

is

apparent

from

plaintiffs’

16

argument

that

their

first

This conclusion is supported by the fact that plaintiffs’ July
2017 answers to interrogatory 7 added citations to their own old
source code and cited to 2033 pages defendants claim should have
been included in plaintiffs’ L. Pat. R. 3.2(b) disclosure. See
Defts.’ October 5, 2017 Slide 25.
32

search for documents did not turn up the documents they later
found because they “just became relevant for the first time in
view of Defendants’ assertion of Sungevity.” Pltfs.’ Response at
28;

see

also

Pltfs.’

Reply

at

13.

(“Upon

adding

Sungevity,

Plaintiff promptly supplemented its responses [July 2017] – only
two months later – to provide more detail, as then and only then
did the detail become relevant. Defendants do not dispute that
aside

from

Plaintiff’s
invention

Sungevity,
December

dates

all

2006

asserted

conception

irrelevant

to

those

prior

date,

art

making

pre-dates
Plaintiff’s

references.”)(emphasis

in

original). In fact, plaintiffs acknowledge they found the new
documents and source code “in response to Sungevity coming into
the case.” Tr.2 at 13:24 to 14.1. The problem with plaintiffs’
argument

is

that

L.

Pat.

R.

3.2(b)

is

not

dependent

on

plaintiffs’ notion of relevancy. Rule 3.2(b) is mandatory in the
sense

that

it

requires

the

production

of

“all

documents

evidencing the conception [and] reduction to practice … of each
claimed

invention[.]” 17

Thus,

the

17

Court

rejects

plaintiffs’

The focus of plaintiffs’ argument changed from when they filed
their Briefs and when the second oral argument was held on
October 18, 2017. Plaintiffs now concede their relevancy
argument carries little weight. (“We’re not … suggesting that
the rules have a relevance carve out.” Tr.2 13:6-10; “I think
the crux of our argument is, we exercised diligence.” Id. at
16:11-12.) Instead of relevance, plaintiffs now focus on the
assertion that they exercised reasonable diligence to produce
required L. Pat. R. 3.2(b) disclosure documents. Plaintiffs make
this argument even though it took them until July 2017 to
produce a cache of key documents and source code.
33

argument
dates

that,

was

not

“[m]ore
relevant

specificity
until

with

respect

Defendants

raised

to

invention

Sungevity

as

allegedly invalidating prior art.” Pltfs.’ Response at 31. Even
if plaintiffs had a duty to supplement under Rule 26(e), they
could not avoid the requirement that they must show good cause
to

amend

a

L.

Pat.

R.

3.2(b)

disclosure.

Otherwise,

parties

could avoid having to show diligence to amend by simply citing
to Rule 26(e).
Under New Jersey’s patent rules and well established case
law, plaintiffs do not get a “do over” when their sense of
relevancy

changes.

The

Court

will

not

enable

this

sort

of

conduct. This is inconsistent with the goal of the Rules to
require “full, timely discovery and provide all parties with
adequate notice and information with which to litigate their
cases.” Depomed, Inc. v. Purdue Pharma L.P., et al., C.A. No.
13-571 (MCC), 2016 WL 8677317, at *3 (D.N.J. 2016)(citation and
quotation omitted). As is well known, the Local Patent Rules
“are 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.” Id. Plaintiffs should
have

taken

this

into

account

when

they

did

their

initial

production in December 2015 and supplemental production in June
2016. This is especially true since Sungevity was listed on the

34

face of each of plaintiffs’ asserted patents. Plaintiffs do not
get “three bites at the apple.”
Plaintiffs’
repeatedly

arguments

argue

their

late

are

not

convincing.

disclosures

should

be

Plaintiffs
permitted

because when the Court granted defendants leave to add Sungevity
it assured plaintiffs they would not be prejudiced. In one sense
plaintiffs are correct. However, the Court did not intend to
give plaintiffs

a

“free

pass”

and

they

could

not

reasonably

expect this to be the case. The Court never excused plaintiffs
from complying with their obligations under the Local Patent
Rules.

In

terms

of

scheduling

deadlines

or

the

number

of

permissible depositions or other discretionary issues of this
sort, the Court was prepared to accommodate plaintiffs. However,
the Court did not excuse plaintiffs from complying with the good
cause/diligence standard in L. Pat. R. 3.7 to amend their Rule
3.2(b)

document

disclosure.

The

Court

did

not

and

will

not

excuse plaintiffs from complying with the Local Patent Rules.
Further, defendants’ amendment that added Sungevity to the
case was due in part to plaintiffs’ original unwieldly strategic
decision about how to litigate the case. The Court stated at the
May 1, 2017 oral argument:
The Court is sympathetic to defendants’ argument about
why it took time to finally formulate their present
invalidity positions. This was occasioned in part by
the fact plaintiffs asserted an unreasonable and
unwieldly number of patents and asserted claims in the
case…. [T]hese numbers evolved over time. Up until
35

September 2016, plaintiffs were asserting nine patents
and 153 asserted claims. It wasn’t until September
2016, that plaintiff reduced their claims to 46, and
then 24 on December 20, 2016.
The Court is concerned that if it denied defendants’
amendment because of delays occasioned by excessive
asserted claims, it could encourage gamesmanship in
the future. This is not how our patent rules and
litigation should work in this District.
Tr.

37:22

to

38:11.

Plaintiffs

should

have

foreseen

the

consequences of their misguided strategic decisions when they
were

made.

Plaintiffs

have

themselves

to

blame

for

the

consequences of their decisions.
As

to

all

but

the

‘436

patent,

plaintiffs

concede

the

reduction to practice documents and source code they disclosed
in July 2017 should have been produced pursuant to L. Pat. R.
3.2(b). Tr.2 12:3 to 13:10. This is true because the documents
are dated before the earliest priority dates for the six (6)
patents. As to the ‘436 patent, however, plaintiffs argue that
since the earliest priority date is April 2007, and the material
at issue is from 2008, they had no duty to produce the material
under
should

Rule

3.2(b).

not

be

Therefore,

stricken

as

plaintiffs

to

the

argue,

‘436

the

patent.

material

The

Court

disagrees. Plaintiffs ignore the fact they claimed April 2008 as
an

alternative

priority

date.

Plaintiffs

must

produce

Rule

3.2(b) documents earlier than each of their proposed priority
dates,

not

documents

just

dated

the

earlier

earlier

than

of
the
36

the
later

two
of

dates.
the

Otherwise,

two

possible

priority dates, but after the first alternative priority date,
may not be produced. This is an unacceptable result. Plaintiffs’
interpretation of Rule 3.2(b) is not consistent with the full
and early disclosure requirements of the Local Patent Rules.
Plaintiffs emphasize the importance of the newly discovered
source code to contest Sungevity and the fact that the old code
was found in a state different form the inventor’s home. Tr.2 at
10:24 to 11:4. However, knowing the importance of old versions
of source code, plaintiffs should have exhausted their efforts
to find the source code no later than July 2016. The Court is
not losing sight of the fact that as late as May 1, 2017 when
defendants’ motion to compel was argued, plaintiffs steadfastly
insisted

their

disclosures

were

complete.

This

was

false.

Moreover, the Court is not ignoring the fact plaintiffs have
always been aware of Sungevity from the face of the asserted
patents.
Plaintiffs

argue

“unique

circumstances”

and

a

“unique

situation” exist here because Sungevity was added to the case in
May, 2017. Tr.2 17:23 to 18:2, 18:10-11. Plaintiffs contend it
would be “unfair” to allow defendants to add Sungevity “late”
but not let plaintiffs use the documents they found because they
are “directly responsive.” The Court disagrees. It is not unfair
to require plaintiffs to do what the rules require and to deny
an

amended

disclosure

where

reasonable
37

diligence

was

not

exercised to locate and produce responsive L. Pat. R. 3.2(b)
documents. This is not the first nor will it be the last case
where

enforcement

of

the

Local

Patent

Rules

results

in

the

exclusion of otherwise relevant evidence.
Although not clear, plaintiffs may also be arguing that
since diligence was not the focus of defendants’ motion they
should not be held accountable if their “reasonable diligence”
or good cause evidence was not as detailed or fulsome as it
could have

been.

defendants

focused

on

plaintiffs’

Cross-Motion

to

Amend

their

Again,

the

Court

had

disagrees.
diligence
to

satisfy

Whether

or

plaintiffs
the

good

not
knew

cause

diligence standard. The burden of proof to show good cause is
plaintiffs’ responsibility whether or not defendants focused on
this argument in their Motion to Strike. Plaintiffs cannot foist
blame

on

defendants

because

plaintiffs

chose

not

to

submit

“diligence” evidence when they knew from a long line of New
Jersey cases, including several from this Court, that this was
an essential element of their burden of proof.
(c)

Conception and Reduction to Practice Dates

Having struck the new documents and Eagle View source code
plaintiffs

produced

with

their

July

2017

answers

to

interrogatory 7, the Court must now address whether to strike
any

new

conception

and

reduction

to

practice

dates

in

plaintiffs’ July 12 and 19, 2017 answers to interrogatory 7.
38

Plaintiffs take the position that these dates did not change for
the ‘436 patent but they changed for the other six patents. Tr.2
35:15-19. 18 Defendants do not agree with plaintiffs. Tr.2 29:814. In any event, if any of the dates in plaintiffs’ July 2017
answers are solely based on the stricken documents and source
code, the dates must also be stricken. However, to the extent
the dates are based on documents produced earlier in the case,
such

as

the

inventor’s

stricken.

This

plaintiffs

to

result
amend

is

their

notebooks,
necessary
L.

Pat.

the

dates

because
R.

will

the

3.2(b)

not

standard

disclosures

be
for
is

different than the standard to supplement interrogatory 7. In
other words, if the dates plaintiffs provided in their July 2017
answers

to

interrogatory

7

are

based

on

documents

timely

produced, the Court considers any new dates to be a legitimate
supplement rather than an amendment requiring a showing of good
case. However, plaintiffs may not rely on any of the stricken
documents

to

support

any

of

the

dates

in

their

answers

to

interrogatory 7.

18

At the October 5, 2017 oral argument defendants presented
Slide 25 documenting that plaintiffs’ July 12, 2017 answer to
interrogatory 7 added “new conception/reduction to practice
story and dates” for all seven asserted patents, added 65 pages
of new material and cited to 1,916 new pages that should have
been produced with plaintiffs’ L. Pat. R. 3.2(b) disclosures.
The July 19, 2017 answer provided new reduction to practice
dates for all seven asserted patents and cited to 117 new pages.
39

Conclusion
In

sum,

for

motions

will

be

accompanying

Order

the

reasons

granted

in

discussed
part

summarizes

the

and

herein
denied

rulings

set

the
in

parties’

part.

forth

in

Opinion.
s/Joel Schneider
JOEL SCHNEIDER
United States Magistrate Judge
Dated: November 29, 2017

40

The
this