BEST MEDICAL INTERNATIONAL, INC. v. ACCURAY, INC. et al

Filing 126

MEMORANDUM OPINION AND ORDER denying 116 Motion to Enforce; denying 117 Motion to Strike, as explained therein. Accuray shall file its Non-Infringement Contentions on or before January 3, 2012. The parties ahll jointly submit a proposed amended CMO on or before January 3, 2012. Signed by Judge Terrence F. McVerry on 12/19/11. (mh, )

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
BEST MEDICAL INTERNATIONAL, INC.,
Plaintiff,
v
ACCURAY, INC., a corporation,
Defendant.

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) 2:10-cv-1043
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MEMORANDUM OPINION AND ORDER OF COURT
Pending before the Court in this contentious patent infringement case are two more
discovery motions filed by Defendant Accuray, Inc. (“Accuray”) to seek compliance by Plaintiff
Best Medical International, Inc. (“BMI”) with its disclosure obligations under the Local Patent
Rules, to wit: DEFENDANT ACCURAY‟S EXPEDITED MOTION TO ENFORCE THE
COURT‟S AUGUST 19, 2011 ORDER COMPELLING INFRINGEMENT CONTENTIONS IN
COMPLIANCE WITH LPR 3.2 (Document No. 116); and DEFENDANT ACCURAY‟S
EXPEDITED MOTION TO STRIKE PLAINTIFF‟S INFRINGEMENT CONTENTIONS
(Document No. 117). Accuray has filed, under seal, numerous exhibits and a brief in support of
its motions. BMI has filed a response and two exhibits in opposition to the motions. Accuray
has filed a reply brief. Thus, the motions have been fully briefed and are ripe for disposition.

Factual and Procedural Background
The tortuous factual and procedural history has been set forth in the Court‟s previous
opinions and will not be reiterated in full herein. Briefly summarized, the only issue remaining
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in this case is BMI‟s contention that Accuray‟s new cancer treatment system, the CyberKnife
VSI System, directly infringes the „283 Patent. By initiating a patent case in this Court, BMI has
necessarily been on notice that the Local Rules of Practice for Patent Cases before the United
States District Court for the Western District of Pennsylvania (“LPR”) are applicable. On
several prior occasions, the Court has chastised BMI for its approach to its disclosure obligations
and has put BMI on notice that it must “strictly comply” with the Local Patent Rules. On
November 16, 2011 the Court awarded Accuray counsel fees and costs of $43,197.18 as a
discovery sanction.
LPR 3.2 requires BMI to serve a “Disclosure of Asserted Claims and Infringement
Contentions” within thirty (30) days after the Initial Scheduling Conference. BMI served its
initial Infringement Contentions on June 13, 2011, the date set forth in the Case Management
Order. Accuray promptly notified BMI that, in its view, the Infringement Contentions were
deficient in numerous respects and requested supplementation. On July 14, 2011, BMI served an
amended infringement chart. On July 18, 2011, Accuray notified BMI that the amendment failed
to cure the alleged deficiencies and criticized BMI for basing the amendments on a publiclyavailable article (the “Kilby Article”) rather than on the Initial Disclosures provided by Accuray.
BMI explained that it had not yet had an opportunity to review Accuray‟s Initial Disclosures in
detail and represented that it would supplement its disclosures, if necessary, as the case proceeds.
Accuray then filed a motion to compel more-specific Infringement Contentions, which the Court
granted.
In its August 19, 2011 Memorandum Opinion, the Court noted that “BMI is not entitled
to engage in willful ignorance of the contents of Accuray‟s Initial Disclosures in order to evade

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its duty of specificity under LPR 3.2.” Moreover, the Court concluded that BMI‟s amended
contentions lacked the requisite level of specificity. The Court stated:
BMI must identify the specific components of the CyberKnife MultiPlan
Treatment Planning System which meet each of the elements of the asserted
claims; must better identify the “means plus function” elements; and must
specifically state whether it is asserting the doctrine of equivalents. The Court
agrees with the shortcomings in BMI‟s Amended Infringement Contentions set
forth in the letter of July 18, 2011 from Accuray‟s counsel. Further, as BMI‟s
Amended Infringement Contentions regarding Claims 25 and 36 are identical,
BMI must articulate whether/how its theories differ under those Claims.
Since the Court‟s Order, the parties have engaged in a lengthy – and ultimately
unsuccessful – effort to amicably resolve this dispute. BMI has made several additional
modifications to its Infringement Contentions in an effort to satisfy Accuray‟s continued
objections. Eventually, BMI dramatically revamped its Infringement Contentions by creation of
a “Supplemental Claim Chart” on October 24, 2011. Accuray continues to contend that BMI has
failed to provide reasonable notice of its infringement theories. Accordingly, Accuray asks the
Court to: (1) hold BMI in contempt of court; (2) strike BMI‟s Infringement Contentions without
leave to amend; and (3) award additional sanctions. In the alternative, Accuray asks the Court to
preclude BMI from asserting the “doctrine of equivalents”; to strike BMI‟s “umbrella” theory of
infringement; to strike BMI‟s contentions with respect to Claim 25 based on the “Simplex
Optimization Algorithm,” the “Iterative Optimization Algorithm,” and the “Sequential
Optimization Algorithm”; and to strike BMI‟s contentions with respect to the corresponding
“means plus function” elements in Claim 29, without leave to amend. In its reply brief, Accuray
summarizes the alleged errors as follows: (1) BMI has not stated whether the “Supplemental”

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Claims Chart drafted on October 24, 2011 replaces -- or supplements – the earlier charts;1 (2)
BMI has not specified whether it is re-asserting a combination or “umbrella” theory with regard
to the three optimization algorithms and uses the vague phrase “regardless of the beam weight
algorithm selected”; (3) BMI has cited to documents which reference Sequential Optimization as
support for Infringement Contentions that are based on Simplex Optimization; (4) BMI has
seemingly introduced new infringement theories in its opposition brief; (5) BMI has improperly
attempted to preserve its ability to expand/revise its infringement theories in the future; and (6)
BMI has failed to identify a specific “apparatus” and “computer.”2
BMI contends that it has fully complied with the Local Patent Rules and this Court‟s
prior Orders. BMI represents that it has modified its Infringement Contentions on numerous
occasions in its effort to satisfy questions posed by Accuray and points out that its Supplemental
Claims Chart is 73 pages long. BMI contends that it has listed every claim element and
identified what features of the CyberKnife MultiPlan Treatment Planning System (“CyberKnife
MTPS”) “read on” each claim element, with supporting references to the Kilby Article and
Accuray‟s own documents. In sum, BMI argues that Accuray merely disagrees with its claims
and raises substantive disputes that must await claim construction.

Discussion
The Local Patent Rules are designed to create a streamlined process that hastens
resolution on the merits by providing structure to discovery which enables the parties to move
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The Court agrees with Accuray that all of BMI‟s Infringement Contentions must be contained in a single
document. The Supplemental Claim Chart certainly appears to be a stand-alone document which sets forth all of
BMI‟s Infringement Contentions. BMI‟s brief cites only to the Supplemental Claim Chart as its statement of
Infringement Contentions. Accordingly it will be treated as such, and all prior versions will be rendered moot.
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The Court has also reviewed the 18-page letter of November 4, 2011 prepared by counsel for Accuray.
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efficiently toward claim construction and the eventual resolution of their dispute. Shared
Memory Graphics LLC v. Apple, Inc., 2010 WL 5477477 *2 (N.D. Cal. 2010) (citations
omitted). To date, this case has not proceeded in the efficient manner envisioned by the Rules.
The Court appreciates the common dynamic in which defendants seek to maximize the
information they obtain, while plaintiffs seek to “hedge.” Nevertheless, it is important that both
sides act reasonably and cooperatively in discovery, and compromise as necessary “to secure the
just, speedy and inexpensive determination” of this case. See Fed. R. Civ. P. 1. The Court has
consulted with the Special Master with regard to the instant motions and is strongly inclined to
refer any future discovery disputes to the Special Master.
Infringement Contentions are to be filed, according to the plain text of LPR 3.2, “not later
than thirty (30) calendar days after the Initial Scheduling Conference.” Although the
Infringement Contentions are to be “as specific as possible,” this is an early step of the discovery
process. Infringement Contentions should not be used to completely preclude BMI from
developing its legal position as it obtains additional information during discovery. Indeed, LPR
3.7 explicitly permits amendments to the Infringement Contentions if they are “timely,”
“asserted in good faith,” and done “without purpose of delay.”
A plaintiff must set forth its theories of infringement “with sufficient specificity to
provide defendants with notice of infringement beyond that which is provided by the mere
language of the patents themselves.” DataTreasury Corp. v. Wells Fargo & Co., 2010 WL
3912486 *3 (E.D. Tex. 2010). The Court concludes that BMI has met this standard. Indeed,
even counsel for Accuray has acknowledged that the Supplemental Claim Chart represents “an
improvement” over BMI‟s earlier efforts. See Letter of November 8, 2011. BMI has clearly
abandoned its duplicative contentions in Claim 36. BMI has explained its use of the “regardless”
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phrase and has clearly stated that it is not asserting an “umbrella” theory of infringement based
on a combination of the optimization algorithms. BMI has represented that it is not now relying
on the doctrine of equivalents.3 At pages 13-14 of the Supplemental Claim Chart, there is an
explanation of BMI‟s contentions with regard to the Simplex Optimization Algorithm, supported
by citations and quotations from Accuray‟s own documents. BMI has provided sufficient
specificity regarding the “apparatus” and the various networked systems which comprise the
“computer.” The Court concludes that Accuray has sufficient information to prepare its NonInfringement Contentions.

In sum, Accuray‟s motions to compel more-detailed Infringement Contentions will be
DENIED. The Supplemental Claim Chart prepared October 24, 2011 shall be deemed to be
BMI‟s sole operative Infringement Contentions and all previous versions shall be disregarded as
moot. Accuray shall file its Non-Infringement Contentions on or before January 3, 2012. The
parties shall meet and confer to submit new proposed case management deadlines on or before
January 3, 2012. The parties shall email, or otherwise provide, a copy of all subsequent filings to
the Special Master.
An appropriate Order follows.
McVerry, J.

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If BMI attempts to assert the doctrine of equivalents later in the case, or seeks to otherwise amend its contentions,
the Court will address the issue at that time. Such issues are not ripe now. No later than fourteen (14) days after the
Court‟s Markman rulings, BMI will be required to definitively state whether or not it will assert the doctrine of
equivalents.
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IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
BEST MEDICAL INTERNATIONAL, INC.,
Plaintiff,
v
ACCURAY, INC., a corporation,
Defendant.

)
)
)
) 2:10-cv-1043
)
)
)

ORDER OF COURT
AND NOW, this 19th day of December, 2011, in accordance with the foregoing
Memorandum Opinion, it is hereby ORDERED, ADJUDGED AND DECREED that
DEFENDANT ACCURAY‟S EXPEDITED MOTION TO ENFORCE THE COURT‟S
AUGUST 19, 2011 ORDER COMPELLING INFRINGEMENT CONTENTIONS IN
COMPLIANCE WITH LPR 3.2 (Document No. 116); and DEFENDANT ACCURAY‟S
EXPEDITED MOTION TO STRIKE PLAINTIFF‟S INFRINGEMENT CONTENTIONS
(Document No. 117) are DENIED. It is further Ordered:
The Supplemental Claim Chart prepared October 24, 2011 shall be deemed to be BMI‟s
sole operative Infringement Contentions and all previous versions shall be disregarded as moot.
Accuray shall file its Non-Infringement Contentions on or before January 3, 2012.
The parties are directed to meet and confer and jointly submit a proposed amended Case
Management Order on or before January 3, 2012.
The parties shall email, or otherwise provide, a copy of all subsequent filings to the
Special Master.

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If there are further disputes, the Court may, at its discretion, seek the input of the Special
Master and assess costs incurred by the Special Master to the non-prevailing party.

BY THE COURT:
s/Terrence F. McVerry
United States District Judge

cc:

Brit D. Groom, Esquire
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Eric P. Reif, Esquire
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Anthony J. Bosinsky, Esquire
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Eric Soller, Esquire
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Kirsten R. Rydstrom, Esquire
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Janice A. Christensen, Esquire
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