Software Rights Archive, LLC v. Google Inc. et al
Filing
213
RESPONSE to Motion re 198 Opposed MOTION Granting Defendants Leave to Amend and Supplement Invalidity Contentions filed by Software Rights Archive, LLC. (Attachments: # 1 Exhibit, # 2 Exhibit, # 3 Exhibit, # 4 Exhibit, # 5 Exhibit, # 6 Exhibit, # 7 Exhibit, # 8 Affidavit, # 9 Text of Proposed Order)(Kaplan, Lee)
Software Rights Archive, LLC v. Google Inc. et al
Doc. 213
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF TEXAS MARSHALL DIVISION
SOFTWARE RIGHTS ARCHIVE, LLC,
Plaintiff,
v.
§ § §
§ Civil Action No. 2:07-cv-511-CE
§ §
GOOGLE INC., YAHOO! INC., lAC SEARCH & MEDIA, INC., AOL LLC, and L YCOS, INC.,
Defendants.
§ JURY TRIAL DEMANDED
§ §
§ §
PLAINTIFF'S MOTION TO STRIKE INVALIDITY CONTENTIONS AND RESPONSE TO DEFENDANTS' MOTION FOR LEAVE TO AMEND AND SUPPLEMENT INVALIDITY CONTENTIONS
TABLE OF CONTENTS
TABLE OF CONTENTS................................................................................................................. i
TABLE OF AUTHORITIES...... ............ ...................... .................................... .............. ........ ........ ii
INTRODUCTION .. ........... ... ......... ... .... ... ....... ........ ... .... ....... ....... ..... ........ ... ... ..... .... ........ ................ 1
ARGUMENT AND AUTHORITIES ..............................................................................................7
1. Motion To Strike Invalidity Contentions .............................................................................8
A. Under P.R. 3-3 and this Court's jurisprudence, invalidity
contentions should be stricken when they lack the required
specificity and fail to give notice of the contentions that the
defendants actually intend to assert at triaL. .............................................................8
B. Defendants' invalidity contentions violate P.R. 3-3. ............................................. 11
C. This Court should order Defendants to amend their invalidity
contentions within ten days of its Order and identify no more than
five obviousness combinations and five anticipatory prior art
references per claim. .............................................................................................. 1 3
II. Response To Motion For Leave.........................................................................................14
Dockets.Justia.com
A. Defendants cannot show good cause, first and foremost, because
they have already violated P.R. 3-3, and further expanding their invalidity contentions would only do greater damage. ..........................................14
B. Defendants cannot show good cause because their unprecedented
request to introduce prior art over two years after fiing fails the
"diligence" requirement and would prejudice SRA and protract this litigation. ................................................................................................................ 1 5
CONCLUSION..............................................................................................................................22
TABLE OF AUTHORITIES Cases
Anascape, Ltd. v. Microsoft Corp., 2008 WL 7180756, at *3 (E.D. Tex. May 1,2008.................................................................... 9
Compo Acceleration Corp. v. Microsoft Corp. , 481 F. Supp. 2d 620,624 (E.D. Tex. 2007)......................................................................... 8, 13
Coopervision, Inc. v. Ciba Vision Corp.,
480 F. Supp. 2d 884,887 (E.D. Tex. 2007)............................................................................. 15
Cummins-Allson Corp. V. SBM Co., Ltd.,
2009 WL 763926, at *4 (E.D. Tex. Mar. 19,2009) ................................................................ 11
Finisar Corp. V. DirecTV Group, Inc.,
424 F. Supp. 2d 896, 901 (E.D. Tex. 2006).......................................................................19,22
Graham V. John Deere Co. of Kansas City,
383 U.S. 1, 33 (1966)...............................................................................................................20
MASS Eng'd Design, Inc. v. Ergotron, Inc.,
250 F.R.D. 284,286 (E.D. Tex. 2008) .............................................................................. 17,21
Nike, Inc. V. Adidas Am. Inc.,
479 F. Supp. 2d 664, 670 (E.D. Tex. 2007)............................................................................. 18
02 Micro Intl Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006). .................................................................................... 16
Realtime Data, LLC v. Packeteer, Inc., 2009 WL 4782062, at *3 (E.D. Tex. Dec. 8,2009)........................................................... 10, 14
Saffran V. Johnson & Johnson,
2:07 CV 0451 (TJW) (E.D. Tex. Feb. 24, 2009))............................................................. passim
11
STMicroelectronics, Inc. v. Motorola, Inc., 307 F. Supp. 2d 845,851 (E.D. Tex. 2004)............................................................................. 15
Sunpower Corp. Sys. v. Cunlink Corp. , 2009 WL 1657987, at *1 (N.D. CaL. 2009) ............................................................................. 16
West v. Jewelry Innovations, Inc.,
2008 WL 4532558, at *3 (N.D. CaL. 2008) ............................................................................. 17
11
This Court should strike Defendants' invalidity contentions as non-compliant with P.R.
3-3 because:
. They
are 13,000 pages long.
. They identify trilions of obviousness combinations and reserve the right to assert
countless further undisclosed combinations.
. They provide thousands of meaningless boilerplate paragraphs where they should
provide specific pinpoint references to prior art excerpts.
. They explicitly purport to identify mere examples, rather than a complete list, of prior art references and combinations.
This Court should reject Defendants' request to further expand their invalidity
contentions because:
. Their proposed amended and supplemental invalidity contentions not only fail to
correct the gross deficiencies in the original contentions but expand and worsen those violations.
. Their failure to proffer the proposed prior ar references any sooner than December
18, 2009-over two years after this suit was filed and nearly one year after their due
date-defeats the requirement that Defendants have been diligent.
INTRODUCTION
Software Rights Archive, LLC ("SRA") sued Google Inc., Yahoo! Inc., lAC Search &
Media, Inc., AOL LLC, and Lycos, Inc. ("Defendants") on November 21, 2007. SRA alleged
that Defendants had infringed and were continuing to infringe U.S. Patent Nos. 5,544,352 ("the
'352 patent"), 5,832,494 ("the '494 patent"), and 6,233,571 ("the '571 patent").
On October 31, 2008, SRA served its infringement contentions on Defendants. These
contentions, accompanied by detailed claim charts, alleged infringement of around 60 claims.
This Court's Patent Local Rules provide defendants 45 days after service of the infringement
contentions to serve their own invalidity contentions. See P.R. 3-3. Thus, per the Rules
Defendants' invalidity contentions were to be due December 15, 2008. With SRA's consent,
however, Defendants requested, and this Court granted, a one-month extension of that date, to
January 16, 2009. (Disc. Order, Dkt. No. 82, at 3.) Subsequently, again with SRA's consent,
Defendants requested, and this Court granted, a further extension to January 23, 2009. (Extn.
Order, Dkt. NO.1 16, at 2.) Defendants served their invalidity contentions on January 23, 2009, a
full one year and two months after this case was filed.
Defendants' invalidity contentions were around 13,000 pages 10ng.1
(SRA's
infringement contentions, by comparison, were around 650 pages 10ng-5% the length of
Defendants' invalidity contentions.) Defendants asserted anticipation, obviousness, and other
defenses against each of SRA's patents.
As to anticipation, Defendants asserted 57 items of prior art against the '352 patent, 79
items of prior ar against the '494 patent, and 71 items of prior art against the '571 patent. (See
Inv. Discl., art. as Ex. 1, at 15-16, 34-36, 59-61.) P.R. 3-3 requires defendants to provide "(a)
chart identifying where specifically in each alleged item of prior art each element of each
asserted claim is found. . . ." P.R. 3-3. Defendants did not provide such a chart. Instead, they
provided charts that failed-in fact, did not even attempt-to identify, for many items of prior
art, where many elements of many asserted claims allegedly could be found. Defendants' claim
charts were replete with vacuous language included just to avoid submitting blanks. For
example, Defendants asserted the following boilerplate language over 900 times in contesting the
'494 patent alone:
Disclosed either expressly or inherently in the teachings of the reference and its incorporated disclosures taken as a whole, or in combination with
the state of the ar at the time of the alleged invention, as evidenced by
substantial other references identified in Defendants' P.R. 3-3 statement and accompanying charts. Rather than repeat those disclosures here, they are incorporated by reference into this chart.
1 This number does not include the prior art itself.
2
(E.g., De Bra Claim Chart, att. as Ex. 2, at 1-28; Bichteler Claim Char, att. as Ex. 3, at 1-13.)
Defendants also made clear that they were expressly withholding from disclosure many prior art
contentions that they intended to use, and instead were disclosing mere "examples" of their
contentions. They said,
The accompanying invalidity claim charts list specific examples of where prior art references disclose, either expressly or inherently, each limitation
of the asserted claims . . .. The references, however, may contain
additional support upon which Defendants may rely. . .. Defendants may
also rely on other documents and information, including cited references and prosecution histories for the patents-in-suit, and expert testimony. . . .
(Inv. Discl. at 4.) Likewise, Defendants' claim charts frequently employed the "see, e.g.,"
designation in identifying allegedly relevant prior art excerpts. (E.g., De Bra Claim Chart at 1-
28; Bichteler Claim Chart at 1 -13.) Defendants' invalidity contentions left SRA guessing as to
which items of prior art Defendants actually intend to use and what contentions Defendants
actually intend to assert at triaL.
Defendants' obviousness disclosures were even more deficient than their anticipation
disclosures. P.R. 3-3 requires Defendants to provide "(t)he identity of each item of
prior ar that
allegedly. .. renders (each asserted claim) obvious." P.R. 3-3. Defendants did not do this.
They did provide a lengthy list of
references for each patent-81 for the '352 patent; 110 (along
with "(r)eferences and prior art cited above as anticipating and/or rendering obvious the '352
Patent" (Inv. Discl. at 40)) for the '494 patent; and 11 1 (along with "(r)eferences and prior ar
cited above as anticipating and/or rendering obvious the '352 and '494 Patents. . . ." (Id. at 66))
for the '571 patent. (See id. at 15-19, 34-41, 59-66.) And Defendants added, vaguely: "In
addition, Defendants incorporate by reference each and every prior art reference of record in the
prosecution of the patents-in-suit and related applications, including the statements made therein
by the applicant and the examiner, the prior art discussed in the specification, and any other
3
statements found in the intrinsic record." (Id. at 66.) But Defendants expressly disavowed any
notion that their disclosures were complete, emphasizing instead that their prior art
identifications were merely "exemplary":
"Defendants identify the following additional
exemplary prior art references. . .." (Id. at 17.) SRA thus cannot know what prior art items
Defendants intend to assert down the road but presently are withholding.
P.R. 3-3 also dictates, "If a combination of items of
prior art makes a claim obvious, each
such combination, and the motivation to combine such items, must be identified." P.R. 3-3.
Defendants did not identify each such combination. Rather, Defendants provided claim charts
identifying an incomprehensible number of "exemplary combinations" of
prior art. For example,
Defendants' obviousness disclosure for just Claim 26 ofthe '352 patent looked like this:
26. A nOfHie,mmntkal flthml fDr mlmerícmUy
Salton, 1971 ;Garlld,1979;fo!Smart, 19Ba';Fox Collections, 19B3;Fox Thesis, 1983;Fox,
reprelWnling objecL~ in l\ computer da!Jbase ¡md for
computerized seardihig ufthe iiumericaIly
mpiesenie uib.lecls in tlro iMiibaso, wIlIlO¡n tlirei: lInd índirecim!¡¡¡iomhips exist between obj!icts in ¡¡li daiabase, compri,ing:
1968;Fox, 1988;Croft 1989;CfOft, lucia, 1969;FrlsseiCousìlt, 1989; Thompson, 19B9;Kommers" 1990;lIJielsen, 1990b;88fk, 1991 ;Dunlop,1991 ;Turtl,
1984;Fox, 1985;Armslroii,
1991 ;TurlJ & Groft.. 1991;Shaw Pari J, 1991;Shaw Part n, 1991 ;Belrabl, 19!13;Brunei, 1992;Shímko, 1974;BiChlel,er & Eaton, 1993;Bourn and Hahn, 2003;TIP;frel 1& S1ìger,
1977;SaIWn, 1970;Sallon and McGill, 19ß3;Salton"1966;Tappr, 1962;Fiisse. 1988;Saltn,
1963;Kochlaook, 1982;Gelbarl.1991 ;Groft, 1993;Go!!man, 1989;Plnsl, 1976;Gamer,
1967;Botafogo, 1992;Alain, 1992;Slipherd, 1990;8ChìminOlìch..1971;Guìmm, 1992;8alloo,
198B;Nlelsn, 1990;8urt, 1991;looarella, 1990;U.S. Pat No. 5,446,891;Rose,
1989;UCINET, 1992;Belew, 1966;3allon, 1975;Hose, 1991;Plroin, 19996;B!chleler&
Parsons, 1974;Rada 1991'lnlermedia;Chen TheS!s199.2Welss1996' ENVIS10N'SMFH
Kessler, 198;Salton,
12.6aJ marking uhjocis in the dalabui; so that each
marked ohject may be indìvidiial!y klentííïed by a
Thesis,
1971;Gar!le!d, 1979;Fox/Smart, 19æ;Fox Collections, 1983;Fox 1983;Fox, 1984;Fox, 19B5;Armstmng, 19aB;Fox. 1988;GroU,1989;Croft, Lucia,
1990;Níelsn, 1990b;Berk,
ctlmpul£lÍ7Ædsearch;
19139;frisseCouslns, 1989;Thompson, 19B;Kommers, 1991 ;Dunlop, 1991 ;Turtle, 1991 ;Turtle & Groft.
1991;Shaw Part I, 1991 ;Shaw Part II,
1991;Betrabel, 1993;Bruneì, 1993;Botrroo and Hahn,2û03.;TIP;Frel &Sleiger,. 1992;Shímko, 198WSallon, 1968;Tapper, 1974;Bichle ler &. Eaton, 19H;Saiiun, 1970;Salton and McGîl,
1982;fnsse, 1988;Saiton,
1963;Kooarik, 198:2;Ge!bart, 1991;Croa 1993;Goflrian,
1990;U-S. Pat. ~'0.5,446,891 ;Rose,
1969;Pinski, 197ô;Garner, 1967;Alaln" 1992;Sl1pherd, '1990;Guìnan, 1992;8alton,
Hl138;Nleisen, 1900;BLJrt 1991;lucareiia,
1969;L!CINET, 1992;88lew, 1986;Rose., 199i;Píro!li, 19996;8Ichteler &. Parsons, 1974;Raâa,
12fibJ creating a first immeT!cal repl'1Snliilloii for
each identified object in U1. dataThiw !iæred up;;!l
Kessler, 1 9ß7;Salton, 1971;Gar!le!c, 1979;Fox/Smar, Thesis,
1991 ;lntermedìa"Ghen Thesis.1992'ENVISION ;SMAT 1983;Fo:t CollectiOIl,1983;Fox
1985;Fox, 1984;Fax, 19B5;A.rmstrong, 1988;Fox, 19B8;Grof~1 9B9;Cron, Lucia,
too obje.c's direct ml atiuiiship with otlwr objects in
too databnse;
l009;frìsseCousins, 1969;Thompson, 1969;Kommers, 1990;Nielsn, 1990b;Berk, 1991 ;Dunlop, 1991 ;Turtle, 1991 ;Turt&. Groft,1991;Shaw Part I, 1991;Shaw Part H, 1993;Bourri aO Hahn,20û3;T!P;Freì & Sleiger, 19SI1 ;Chen, 1992;Betrabet, 1993;Bmnei,
1992;Shlmko, 1974"Eilchleler & Eaton, 1977'Saîlon, nl7llSai!on aoo McGilL, 1983;8atton
1900;Tapper, 19B2;Fr!sse, 1988;Sallon, 1963;Kochlanek, 1982;Ge:lbart,1991 ;Groft, 1993;Goffman, 1969;Pìnski, 1976';Garoor, 1967;8ola!ogo, 1992;3hepherd,
199G;Schimlnoicn, 1971;Guìnan, 1992;Saflon,
1988;N!elsn, t990;Burt; 1991;Lucare!la,
1990;U,S, Pat. No, 5,446,891;Rose, 1989;UCINET,l992;Belew, 1986;Rose, 1991 ;P!roUi, 19996;Blchteler & Parsons, 1974;Rada, t991;lnlemiedía;Chen Thesis, 19S2;Weiss, 1996; ENVISION;SMART
4
!26eJ sloiing the firM 11U1,icdeiil repl'C&iiliitioii& for
Wil in ixinpiiterized Sliiitliing;
Salton, HI7;GarHeld, 1979;Fox/Smarl,1983;Fox Colleclions, HJ83;Fox Thesis, 1963;fox,
1984 ;Fax, 1985;AimsTfong, 1988;Fox, 1988;Cmfl,1989;Cloft. luaia, 1989;FriaseiCous1ns, 1989;Thompson, 1989;Komnirs, 1990;Nlelsen, 19901:;8erk, 1'991 ;Dunlop,
1991 ;Turlle,
1991 ;Ttir1 & Croft 1991 ¡Shaw Part I, 1991 ;Shaw Part II, 1991 ;Clin, 1992;8etrabel,
1993;Bruooi, 1993;Boume and Hahn, 2003;UP;Frel .& Steiger; 1992;ShimkD, 1974;Bichteier
& Eaton, i 977;8atton,. 197o;8a1ton and
McGUl, 1983;Satton, 1968;Taper, 1982;ftisse,
1988;8alton, 1963;Kochtenek, I
982;Gelbarl" 1991;Cmrt 1993;Goffma, 1969;Pfnski;.
1976;Garoor, 196;8otatogo, '1992;Slipnerd, 1900;SchfrninoVlih, 1971 ;Guinan,
!26dJ armyzÍIig the rtrst iiUll'ilkal J-epniooiitation~ for indirect rclalimi,!iips oxisting !itwoon or iimong
objiN)ts in too dntiibasi!;
1992;Satton, 1988;Nietseii, 1000;800,1991 ;Lucaietla, 1990.;U.8. Pat No. 5,446,891;RPse, 1989;UOINH, 1992;8elew, 1986;Rose,1991 ;Pfroilf,19996;Bichtefer & Parsons, 1974;Rada, 1991'lntermedla.;Chen TIsl, 1992; Weiss 1996' ENVISION;SMAHT Sallon, 1971 ;Gartield, 1979;Fox/Smart; 1983;Fox Col!ec!ions, 1983;Fox Thesìs, 19a3;Fo;:,
1984;Fox, 1985;Armalrong, 1989;Thompson, 1989;Komnirs,
19B8;Fox, 1988;CIoft 1989;Crofl, Lucia,1969;Frisse!Gousllt, 1900;Nlelsen, 19901:;8erl, 1991 ;Dun!op, 1991 ;Turle,
1991;Turle g Croft, 1991;ShawParU,. 1991;Sha"l Part 11, 1991;Cnen, 1992;Betrabet,
1993;Bruooì,1993;Boume aOO Hahn, 2u03;TIP;Frei 8. Steiger, 1992;Shimko, 1974;Bìclüeler
& EalDn, 1977;Sattori,
1970;Salton and McGi!, t9B3;Sal!on, 1968;Tapper; 1982;Fi!sse,
1988;8alton, 1963;Koohtaook,1982;Geltiar, 1991;Crott 1993;Goffman, 1969;PinsK, 1976;Garoor, 196;8otatogo, 1992;Slipherd, 1900;Schìmfnov'ich, 1971;Guinan,
1992;8alton, 198B;Nlelseri, 1990;Burt" 1991;lucaiella, 1990;0.8. Pat. No. 5,44t,891;Rose,
1989;IJGINH, 1992;8elel', 1986;Selton,
1975;Rose, 1991;Piro¡¡i, 19996;Bídhteler&
Parons, 1974'lada,.1991 ;lnteimedfa;Clin Thesis 1992" Weiss. 1996; ENVISION;8MART
!26elg\JwratJng lIiæi!ontl. nllflriL~iI repro,entatimi of each object haiwd on 100 aiia!ysj s of the first mimiricii! reprewntalion;
Salton, 1971;Garfielâ,1979;Fox/Smart, 1983;Fox Colleclions, 1983;FoxThesìs,1983;Fox,
1984;Fox, 19&5;Armslforig, 1988;Fox, 1900;Crf~ 1989;Croít, lucia,1989;FiisseiCousins,
1989;Thompson,
19B9;Komnirs, 1900;Nlelsen, 1990b;8ei1, 1991 ;Dunlop, 1991 ;Turl,
i 992;Shìmko,
1991 ;Tuil! .& Grot!, 1991;Shaw Part :1, 1991;Shaw Part U, 1991 ;Clin, 1992;8etrabet,
1993;8mooi, 1993;Boume and Hahn,. .2003;UP;Frel & Steìger,
1974;Bìclieler
&. Eaton.. 1977;Salon, 1970;Salton aOO McGill, 1983;8a11Dn, 1968;Tapper,. 1
982;Flîsse ,
1988;Salton, 1963;Kochtaook,1982;Groft, lS93;GoIlman, 1969;Pfnskì,. 1976;Garrier,
1 1990;Schfntlnoich, 1971;Guinan, 1992;Sattori,1988;BUlt,
t 0" 50446,,891 ;Rose,.1989;UC:INH,1992;8eleVl,
1986;Salton, 1975;Hose, 1991;pirom, 19996;8Ictteler& Parsofl, 1974;Rada,
126fJ storing the second mlJ10rlcal reproSl'Jtatinn fur are in compUllerfzed se.irching; and
, 1983;Fox Colleallons, 1983;Fox Thesìs, 1983;Fax, 1968;fo, Ul88;Cwlt 1989;Croft, lucia, 1969;FrlsseiCousìlt, 19B9;Thompson, 1989;Komniers, 1900;Nlelsea 1990b;Berk 1991;Dunlop, 'l99l;Turt, 1991 ;lur1 & Croft, 1991;Shaw ParH 1991;Shaw Part U,1991 ;Chen, 1992;8ettabet,
1984;Fcoc, I 98S;ArFrstroii,
1993;Bmoo1, 1993;Boume and Hahn, 2003;TIP;Frel & Steigei, 1992;Shlmko, 1974;Bichteier
&. Eaton. 1977;8alon, 1970;Sallon aOO McGill, 1985;8allon, 1968;Tapper, 1982;Filsse,
198B;8alton, 19S3;Kootaiiek, 1982;Gelbat 1991;Crolt 1993;Goffman, 1969;Pinski, 1976;Garner, 1967;8otafogo,1992;Slipllrd, 1900;Schiminovloh, 1971;Gufnan,
1992;Salton,
!26gJ i;iirchhig the nb.jectB üi the databawe uiiing a
CDl1pu!el aiit the stured scL'omliJUloorical ropll5eutatíons,lVherdn the su¡ifdi ideuiífes 000 or
Salton,tS7l; 1963; ox x,
1984;Fox, 1985;Armslrong, 19B8;Fox, 1988;Grot!,
Parsons, 197 li NVISION;SMART
199.3;Bmooi, 1993;Boume and
I 988;Nle lseri, 1990;Burt, 1991 ;l.ucaielia, 1990;U.S. Pat. No.5,44t,.89t;Rose, 1989;UC1NET, 1992;Belew, 1986;Salton,. 1975;Bose, 1991;Pìro1!L 19996;Biohteler&
1969;Croft, lucía, 19B9;FrisseiGousìns, 1989;Thornpson, 1989;Komnirs, 1990;Nlelsen, 1990b;8erk, 1991;Dunlop,1991 ;Turlle,
more of the ubjects in the datiibaw.
1991 ;Turl! & Crolf,1991;Shaw Pari I, 1991;Shaw Partn, 1991 ;Chen, 1992;8etrabet,
Hahn, ZOO3;TIP;Freì & steìger, 1992.;Shímko, 1974;8iChieler
8; Eaton, 1977;Sanon, e1970;Sallon and McGEI" t983;Sanon" 196B;lapr, et 982;FrisSB,
1988;saton, lS63;Koohtanek, 198Z;Gellar, 1991;Grolt 1993;Goffman, 1969;Pìnskí,
99Z;Salton, 1988;Burt, 1991;lucarella,. 1990;U.8. Pat No" 5,446,S9t;Rose, 19S9;UCINET, 1992;8eIe, 1986;Salton, 1975;Rose, 1991;PifOl!,. 19996;Bichteler& Palsons,f974;Rada, 1991'fntermedfa:Ghen Thesis, 1992. Weiss, 1996' ENVfSION;SMART
1976;Gaioor, 1967;Alln,1992;Shepherâ,1990;SChimìooY1ch,.19Tl ;Gi1iin, I
(Claim 26 Exemplary Combin'ns, art. as Ex. 4, at 1-3.)
Defendants instructed that
"combinations of two or more of the references identified in the char () render the claims
obvious." (Id. at 1.) In other words, as to Claim 26, Defendants disclosed only that they would
use one or more of over 221 trilion combinations. That was not very helpfuL.
Defendants in fact rendered even these "exemplary combinations" meaningless by
indicating that they would rely not only on those combinations, but on any combination of
5
references they desired: "In addition to the exemplary combinations of prior ar . . . , Defendants
reserve the right to rely on any other combination of any prior art disclosed herein." (Inv. Discl.
at 20.) The number of
those "any other combination(s)" to which Defendants referred, needless
to say, had more zeros than anyone would care to count. Defendants then went even a step
further and asserted that "each prior art reference may be combined with. .. information known
to persons skiled in the art at the time of the alleged invention," along with "any statements in
the intrinsic record of patents-
in-suit and related applications." (Id. at 19.)
In short, Defendants did everything in their power to disclose nothing in their P.R. 3-3
disclosures. Instead, Defendants forced SRA to expend hundreds of thousands of dollars in
expert and attorney time trying to divine Defendants' contentions, with no guidance from
Defendants whatsoever.
SRA complained repeatedly to Defendants about their insufficient invalidity contentions.
In addition to multiple telephone calls, SRA sent Defendants two letters explaining its concerns.
On March 11,2009, SRA stated:
We are writing you because your invalidity contentions do not comply
with P.R. 3-3 . . . . Defendants' invalidity contentions fail to give any
meaningful notice of Defendants' actual positions. . . . Defendants have
apparently buried their invalidity positions somewhere within 13,OOO-plus pages of claim charts. . . . The claim charts fail to identify specific portions of the references upon which Defendants rely for each claim element. . . .
(T)hese charts disclose milions, if not bilions, of combinations of
references. This is precisely the type of limitless combinations that led Judge Ward to strike the Saffran defendants' claim charts.
(3/11/09 Hardy-Defs. Letter, att. as Ex. 5, at 2 (referring to Order, Saffan v. Johnson & Johnson,
2:07 CV 0451 (TJW) (E.D. Tex. Feb. 24, 2009)).) Likewise, on July 8, 2009, SRA stated: "We
are concerned because the Invalidity Contentions state on page 4 that your invalidity claim charts
are merely ilustrative or representative of
Defendants' complete invalidity contentions for triaL"
(7/8/09 Hardy-Defs. Letter, att. as Ex. 6, at 1-2.) Further, "(Y)ou() fail(ed) to identify where
6
specifically in each alleged item of prior art each element of the asserted claims is found. . . ."
(Id. at 2.)
Defendants dismissed SRA's concerns. Defendants denied that 13,000 pages was
excessive: "At the outset, we disagree that Saffran holds that Defendants' Invalidity Contentions
are somehow deficient because of
their length. . .." (3/27/09 Hung-Hardy Letter, att. as Ex. 7,
at 1.) Defendants also attempted to justify that length by complaining about SRA's
infringement allegations: "While Defendants' claim charts admittedly are quite long, they are
necessarily so. In this case, SRA has alleged that five different defendants infringe 64 claims of
three different patents." (Id. (emphasis in original).) Furher, "Defendants struggled to
understand the positions that SRA might be taking on infringement and how those positions
might impact invalidity." (Id. at 3.) Defendants never even attempted to explain how
anything-let alone SRA's allegations-"necessitated" their using over 900 paragraphs of
boilerplate anticipation allegations for one patent alone or their assertion of trilions of
obviousness combinations. To this day, Defendants have neither pared down nor clarified their
invalidity contentions.
To the contrary, over two years after this case was fied, and almost one year after
submitting their original 13,000 pages and over 100 prior art references, Defendants now come
to this Court claiming that they have not had suffcient time to prepare their invalidity defenses
and should be permitted to add new references and contentions at this late date. This Court
should deny Defendants' request, strike their invalidity contentions, and require them to comply
with P.R. 3-3.
ARGUMENT AND AUTHORITIES
This Court should grant SRA's motion to strike Defendants' invalidity contentions, and
deny Defendants' motion to supplement their invalidity contentions, because Defendants' 13,000
7
pages of uninformative disclosures violated P.R. 3-3, and fuher, Defendants have not shown
good cause for supplementing at this late date.
I. MOTION To STRIKE INVALIDITY CONTENTIONS
This Court should strike Defendants' invalidity contentions, because they violate P.R. 33' s disclosure requirements.
A. Under P.R. 3-3 and this Court's jurisprudence, invalidity contentions should
be stricken when they lack the required specificity and fail to give notice of the contentions that the defendants actually intend to assert at triaL.
The Local Patent Rules "exist to further the goal of full, timely discovery and provide all
parties with adequate notice and information with which to litigate their cases. . .." Compo
Acceleration Corp. v. Microsoft Corp., 481 F. Supp. 2d 620, 624 (E.D. Tex. 2007) (internal
quotation marks omitted). They are intended "to speed up the litigation process and make it less
expensive." Id.
One of these rules, P.R. 3-3, requires defendants to provide invalidity contentions that
disclose at an early date the specific anticipation and obviousness positions that they intend to
assert at triaL. As to anticipation, P.R. 3-3(c) requires Defendants to provide "(a) chart
identifying where specifically in each alleged item of prior art each element of each asserted
claim is found. . .." P.R. 3-3(c). As to obviousness, P.R. 3-3(b) requires that "(i)f a
combination of items of prior art makes a claim obvious, each such combination, and the
motivation to combine such items, must be identified." P.R. 3-3(b). P.R. 3-3(a) also requires, as
to both defenses, that defendants provide a complete list of the prior art items on which
defendants intend to rely: "(E)ach party opposing a claim of patent infringement() shall. . .
identi(fy) each item of prior art that allegedly anticipates each asserted claim or renders it
obvious." P.R. 3-3(a).
8
These disclosure requirements "are a way to streamline the discovery process."
Anascape, Ltd. v. Microsoft Corp., 2008 WL 7180756, at *3 (E.D. Tex. May 1,2008. They
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. The purpose of the rules is to put the
parties on notice of
the information its adversary anticipates using at triaL" Order at 1, Saffran v.
Johnson & Johnson, 2:07 CV 0451 (TJW) (E.D. Tex. Feb. 24, 2009).
This Court has stricken contentions that skirted or only nominally complied with these
rules, undermining the policies on which they are based:
. This Court has stricken contentions that were overly lengthy and effectively
buried the defendants' contentions in a haystack of prior art references. See id. at 1-2 ("The
defendants' almost 800 pages of 'Invalidity Contentions' do not put the plaintiffs on real or
useful notice.").
. This Cour has stricken contentions that failed to identify the specific
combinations that the defendants intended to use at triaL. Id. at 2 ("The defendants' current
'Invalidity Contentions' are an attempt to end run the rules. They do not specifically identify
combinations of
references that the defendants anticipate using at trial. . . .").
. This Court has stricken contentions that purported to set forth mere examples,
rather than a complete list, of prior art items on which the defendants intended to rely. Id. at 2
("(T)hey include language purporting to make the contentions merely ilustrative.").
. This Court has stricken contentions that combined prior ar references with
"information known to persons skiled in the art." See Realtime Data, LLC v. Packeteer, Inc.,
2009 WL 4782062, at *3 (E.D. Tex. Dec. 8, 2009) ("(T)he purpose of the Patent Rules is to
avoid reliance on the amorphous knowledge of one of ordinary skil in the art.").
9
. This Court has annulled language by defendants purporting to reserve the right to
combine any charted references-such as language that prior art can render a claim obvious
when "viewed alone or in combination with other prior ar references." See id. at *3 ("(T)he
Court does not find that reserving the right to combine any charted prior art references offers a
plaintiff sufficient notice to adequately rebut a defendant's largely undisclosed invalidity
theories. Language preserving a defendant an opportunity to later rely upon undisclosed
combinations does not clearly suggest the combination in the manner required by Patent Rule 33." (internal quotation marks omitted)).
. This Court has stricken contentions that did not provide notice of defendants'
specific invalidity arguments for each element of each challenged claim. See id. ("Citrix was
required to submit chars for any asserted prior art reference providing notice as to how each
claim element is met-claim-by-claim and element-by element."); Cummins-Allson Corp. v.
SBM Co., Ltd., 2009 WL 763926, at *4 (E.D. Tex. Mar. 19, 2009) ("Defendants are required to
submit Invalidity Charts to provide notice of how each claim element is met. Failure to provide
the specific reference that allegedly reads on a claim limitation of the ' 806 Patent does not place
Plaintiff on suffcient notice.").
. This Court has held irrelevant to the sufficiency of invalidity contentions claims
that the plaintiffs' infringement contentions were overbroad. See Cummins-Allson, 2009 WL
763926, at *3 ("While Plaintiff has undoubtedly engaged in tactical games in an attempt to gain
an advantage by asserting more than 200 claims, having only pared them down to 1 16 claims at
the time Defendants served their Invalidity Contentions, Defendants cannot be excused for
neglecting to fie complete Invalidity Contentions.").
10
B. Defendants' invalidity contentions violate P.R. 3-3.
Defendants' invalidity contentions violate everyone ofthe P.R. 3-3 principles:
. They are absurdly lengthy. Defendants' invalidity contentions are 13,000 pages
long-over 16 times longer than the contentions stricken in Saffran-and they assert 81 items of
prior art against the '352 patent, 11 0 items of prior ar against the '494 patent, and 11 1 items of
prior ar against the '571 patent. (See Inv. Discl. at 15-19, 34-41, 59-66.)
. They fail to identify the specific combinations of references that Defendants
intend to assert in arguing obviousness. Instead, they identify trilions of combinations and then
assert that Defendants may go even beyond those bounds.
. They purport to set forth mere examples, rather than a complete list, of prior art
items on which Defendants intend to rely-for example: "The accompanying invalidity claim
chars list specific examples of where prior art references disclose, either expressly or inherently,
each limitation of the asserted claims. . .. The references, however, may contain additional
support upon which Defendants may rely." (Inv. Discl. at 4.)
. They reserve the right to combine disclosed prior art references with amorphous
knowledge of persons skiled in the art-for example: "(E)ach prior art reference may be
combined with . ., information known to persons skiled in the art at the time of the alleged
invention. . .." (Id. at 19.)
. They reserve the right to combine any disclosed prior art references with any
other disclosed prior art references-for example: "Defendants reserve the right to rely on any . .
. combination of any prior art disclosed herein." (Id. at 20.)
11
. They fail to provide notice of Defendants' anticipation contentions for each
element of each challenged claim. Instead, they provide the following meaningless boilerplate
throughout-for example, over 900 times in challenging the '494 patent alone:
Disclosed either expressly or inherently in the teachings of the reference and its incorporated disclosures taken as a whole, or in combination with
the state of the art at the time of the alleged invention, as evidenced by
substantial other references identified in Defendants' P.R. 3-3 statement and accompanying charts. Rather than repeat those disclosures here, they are incorporated by reference into this chart.
(E.g., De Bra Claim Chart at 1-28; Bichteler Claim Chart at 1-13.)
. They reserve the right, regarding obviousness, to combine any disclosed prior art
references with any other disclosed prior art references-for example: "Defendants reserve the
right to rely on any. . . combination of
any prior art disclosed herein." (Inv. Discl. at 20.)
. They falsely, hypocritically (since their invalidity contentions are 20 times the
length of SRA's infringement contentions), and irrelevantly claim that their non-compliance was
the result of
"the breadth of SRA's infringement contentions." (Defs.' Mot., Dkt. No. 198, at 7.)
In short, Defendants' invalidity contentions trample both the spirit and the letter of P.R.
3-3. They do not provide SRA with "notice of
the information its adversary anticipates using at
triaL" Order at 1, Saffan, 2:07 CV 0451 (TJW). Rather, they hide that information in an ocean
of references and theoretical combinations. They wil help neither to "speed up the litigation
process and make it less expensive," Compo Acceleration, 481 F. Supp. 2d at 624, nor to
"streamline the discovery process." Anascape, 2008 WL 7180756, at *3. Rather, Defendants
have forced SRA to waste months of time and hundreds of thousands of dollars trying to divine
their invalidity positions, and they are now wasting this Cour's resources by forcing this Cour
to enforce compliance. The invalidity contentions reflect no effort by Defendants to "crystallize
their theories of the case early in the litigation and to adhere to those theories once they have
12
been disclosed." Order at 1, Saffran, 2:07 CV 0451 (TJW) (internal quotation marks omitted).
Rather, they reflect a transparent strategy of keeping options open and hiding the ball until the
very last minute, to ambush SRA at triaL.
C. This Court should order Defendants to amend their invalidity contentions
within ten days of its Order and identify no more than five obviousness
combinations and five anticipatory prior art references per claim.
This Court should strike Defendants' invalidity contentions and permit Defendants to
serve amended contentions within ten days that assert no more than five obviousness
combinations and no more than five anticipatory prior art references per claim. Further, this
Court should order Defendants to attach detailed claim charts identifying the specific language
on which they intend to rely. Such a ruling would closely resemble this Court's ruling last
month in Realtime Data, LLC v. Packeteer, Inc., 2009 WL 4782062 (E.D. Tex. Dec. 8,2009). In Realtime Data, this Court ruled that the defendant's invalidity contentions failed to comply with
P.R. 3-3, and as remedies "limited (the defendant) to asserting no more than five obviousness
combinations," ordered the defendant to "identify these combinations by (three days after the
date of the order)," and ordered the defendant "to serve its amended invalidity contentions,
incorporating these combinations pursuant to P.R. 3-3, by (seven days after the date of the
order)." Realtime Data, 2009 WL 4782062, at *4.
Such an order also would enforce compliance with P.R. 3-3 and its puroses of
requiring
notice and enabling efficient resolution. At 13 ,000 pages, chock-full of meaningless boilerplate,
and disclosing over 100 prior art items and literally trilions of combinations, Defendants'
current invalidity contentions violate P.R. 3-3 and its purposes. SRA has wasted hundreds of
thousands of dollars and many months attempting to discern Defendants' invalidity positions,
and SRA has spoken multiple times and sent multiple letters to Defendants requesting
clarification of
Defendants' positions, to which requests Defendants have responded dismissively
13
and in bad faith. SRA now has no ability to respond to Defendants' invalidity positions and
lacks the time and resources, given that this case is two-thirds done, to respond to a slew of
arguments. Defendants know full well that, as a practical matter, they wil have to pare down
their invalidity defenses to a handful of anticipation and obviousness arguments. They have had
far more time than the ordinary litigant to keep their options open. This Court should order them
to crystallize and disclose their actual arguments for trial now.
II. RESPONSE To MOTION FOR LEAVE
This Court should forbid Defendants from further expanding their already non-compliant
invalidity contentions. Under this Cour's Local Rules, "Amendment or supplementation (ofJ . .
. Invalidity Contentions. . . may be made. . . only upon a showing of good cause." P.R. 3-6(b).
The intent behind this exception is "not to create supposed loopholes through which parties may
practice litigation by ambush." Coopervision, Inc. v. Ciba Vision Corp., 480 F. Supp. 2d 884,
887 (E.D. Tex. 2007) (internal quotation marks omitted). Rather, this Court has a "duty to avoid
unfairly prejudicing (parties) through eleventh-hour alterations." Id. (internal quotation marks
omitted). Defendants bear the burden of demonstrating good cause, and unless Defendants do
so, this Cour should deny their motion. See STMicroelectronics, Inc. v. Motorola, Inc., 307 F.
Supp. 2d 845,851 (E.D. Tex. 2004) (identifying the movant as the party bearing the "good cause
burden").
A. Defendants cannot show good cause, first and foremost, because they have
already violated P.R. 3-3, and further expanding their invalidity contentions would only do greater damage.
Defendants cannot show good cause for further expanding their invalidity contentions,
first and foremost, because they have already violated P.R. 3-3 in multiple respects with their
grossly overbroad and non-specific disclosures. Where P.R. 3-3 is intended to require notice so
as to enable effcient litigation, Defendants have already caused significant damage by
14
withholding notice and forcing SRA to waste many months and hundreds of thousands of
dollars. Defendants' effort to expand their contentions would only further undermine this
Court's policies by generating only more confusion and causing only more wastage of time and
money. This is the opposite of "good cause." For the reasons articulated for striking
Defendants' invalidity contentions, this Court should, a fortiori, deny Defendants' motion for
leave.
B. Defendants cannot show good cause because their unprecedented request to introduce prior art over two years after fiing fails the "dilgence"
requirement and would prejudice SRA and protract this litigation.
Even setting aside Defendants' violations, Defendants have not demonstrated good cause.
First, demonstrating good cause "requires a showing of diligence." 02 Micro Intl Ltd. v.
Monolihic Power Sys., Inc., 467 F.3d 1355, 1366 (Fed. Cir. 2006).2 Defendants have not shown
diligence. Even assuming they had never seen SRA's patents before this suit was fied (which is
not the case), Defendants had fourteen months from filing to identify prior ar and construct
invalidity contentions. What is their excuse for delay? Or their showing of good cause?
Nowhere have they identified what prior art searches they conducted in the fourteen months
between the fiing of this case and the date they submitted their invalidity contentions, nor why
those searches should be deemed to constitute "diligence." Defendants' claims of diligence are
conclusory and devoid of substance: "Defendants prepared and timely served their original
invalidity contentions. Afterward,... Defendants continued to develop their invalidity defenses.
Defendants' continuing diligence led to the discovery of additional references and new
2 See also Sun power Corp. Sys. v. Sun 2009) ("(U)nder the Federal Circuit's interpretation of
link Corp., 2009 WL 1657987, at *1 (N.D. CaL. June 12, this District's Patent Local Rules, a failure
to establish diligence ends the inquiry.") (applying rules similar to this Court's-in pertinent part: "Amendment of the Infringement Contentions or the Invalidity Contentions may be made
only by order of
the Court upon a timely showing of good cause.").
15
obviousness combinations." (Defs.' Mot. at 4-5.) This is insufficient as a matter of law. See
West v. Jewelry Innovations, Inc., 2008 WL 4532558, at *3 (N.D. CaL. Oct. 8, 2008) (denying
leave to amend invalidity contentions for failure to demonstrate diligence: "Benchmark does not
describe in any detail the efforts it undertook to discover additional prior art other than 'diligent
inquiries' to unidentified 'contacts.' It does not explain any impediments to finding the Stanley
ring more expeditiously. . . . (I)t does not provide any information about when or why it began
the inquires, how it inquired, who its contacts in the industry were, or even() what it inquired
about. The burden is on Benchmark to establish diligence, and merely asserting that it made
'diligent' inquiries does not meet this burden.").
Indeed, Defendants cannot show diligence. To show diligence, Defendants must show
that they "(could) not reasonably meet the scheduling deadlines" despite the exercise thereof.
MASS Eng'd Design, Inc. v. Ergotron, Inc., 250 F.R.D. 284, 286 (E.D. Tex. 2008) ("The good
cause standard requires the party seeking relief to show that, despite its exercise of diligence, it
cannot reasonably meet the scheduling deadlines.") Here, Defendants did not fie their motion
and proffer their proposed prior art references until December 1 8, 2009. In effect, therefore,
Defendants' position, which they must prove for their motion to be granted, is that any deadline
short of December 18, 2009-a date over two years into this case and nearly one year after their
actual deadline for serving invalidity contentions-eould not reasonably have been met.
Defendants' position is untenable.
First, Defendants' position finds no support in the case law whatsoever. After diligent
searches, SRA has not found even one case finding diligence where a defendant sought to amend its invalidity contentions over two years after fiing.3
3 This representation is based on a review of the case law published through Westlaw.
16
Second, it is incorrect. The patents-in-suit concern web search technology, and web
search technology is at the hear of what Defendants do. Defendants employ many of
the field's
leading experts, including former academics who have published leading articles in the field.
Defendants even own patents in the field. The prior ar references that Defendants seek to assert
now are not obscure, but are published papers available in academic libraries and discoverable
through searches on Defendants' own web search engines. Defendants' delinquency is not the
product of an unreasonably early deadline. It is a reflection of their attempt to take the '''rolling'
approach to . . . invalidity contentions" that this Court has deemed contrary to the Patent Local
Rules. Nike, Inc. v. Adidas Am. Inc., 479 F. Supp. 2d 664,670 (E.D. Tex. 2007); see Anascape,
2008 WL 7180756, at *5 (denying leave to amend invalidity contentions in par because, insofar
as the new prior art references "actually are publicly available articles, parties with the vast
combined resources of
Defendants could have located them with relatively little effort.").
two years could not reasonably be
Finally, Defendants' contention that a deadline short of
met, if accepted, would set a harmful precedent. Such an unprecedented extension of the law
would encourage future litigants to disclose their invalidity contentions in waves so as to "hid( e)
their true intentions until
late in a case," a practice that this Court has deemed "pernicious." Id.
And it would protract and increase the cost of litigation by encouraging battles over the limits of
such gamesmanship. This is the opposite of the intent of the Patent Local Rules, "one of the
goals of (which) is to speed up the litigation process and make it less expensive." Finisar Corp.
v. DirecTVGroup, Inc., 424 F. Supp. 2d 896, 901 (E.D. Tex. 2006).
In fact, Defendants' motion itself betrays Defendants' recognition that they delayed
unreasonably in discovering and disclosing the proposed prior art references. Tellngly,
Defendants' motion does not even attempt to affirmatively demonstrate prior diligence. Instead,
17
for the most part it attempts to justify Defendants' lack of diligence by blaming SRA:
"Defendants' identification of additional references can be attributed in part to the breadth of
SRA's infringement contentions"; likewise, "Any delay by Defendants is largely due to SRA's
failure to respond to Defendants' repeated requests that SRA amend its infringement
contentions." (Defs.' Mot. at 6-7.) Defendants' argument fails in several respects.
First, it is irrelevant as a matter of law. This Court has specifically held that deficient
infringement contentions-even when the product of a plaintiff s gamesmanship-provide no
excuse for untimely, incomplete invalidity disclosures: "While Plaintiff has undoubtedly
engaged in tactical games in an attempt to gain an advantage by asserting more than 200 claims,
having only pared them down to 116 claims at the time Defendants served their Invalidity
Contentions, Defendants cannot be excused for neglecting to file complete Invalidity
Contentions." Cummins-Allson, 2009 WL 763926, at *3. Thus, even on Defendants' view
of
the facts-which is wrong-Defendants' lack of diligence cannot be excused.
Defendants' finger-pointing is irrelevant for a further reason. Defendants' argument is
that their prior art search was hampered by supposedly deficient infringement contentions, but
there simply is no connection between the content of a plaintiff s infringement contentions and a
defendant's ability to assess invalidity. It is "well settled that an invention is construed. . . in the
light of the claims, (and) with reference to the fie wrapper of prosecution history in the Patent
Offce." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 33 (1966). The contents of a
plaintiff s infringement contentions are not pertinent. Defendants have not even attempted to
show a connection-because there is none-between their complaint against SRA and their own
failure.
18
Second, SRA's infringement contentions were not overbroad. They were thorough and
included detailed claim charts. Again, not surprisingly, Defendants offer no details explaining
how
exactly SRA's contentions were deficient. Instead, Defendants point merely to the length of
those contentions-but 650 pages is a reasonable length for SRA's infringement contentions
given that SRA asserted roughly 60 claims and provided detailed, compliant claim charts.
Third, Defendants' complaint that SRA asserted roughly 60 claims is disingenuous. If 60
claims was too many to properly analyze, did Defendants properly analyze even one claim? No.
Instead, as noted above, Defendants asserted around 100 prior art references and 200 trilion
combinations per claim.
Finally, as already noted, Defendants' argument is flatly hypocriticaL. Defendants
complain that SRA's infringement contentions were 650 pages long. Defendants' invalidity
contentions were 13,000 pages long-twenty times longer than SRA's infringement contentions.
Need any more be said?
The reality is that Defendants did conduct a sweeping search of the alleged prior art, as
evidenced by their initial, egregiously overbroad invalidity disclosures. They had their chance,
and they took it-and saved themselves time and money while doing so by failing to comply
with this Court's specificity requirements. And to the extent that their efforts did not yield the
several references they now propose, it is because they devoted their resources-and tied up
SRA's and the judiciary's resources-to a number of meritless legal adventures, from fiing
multiple briefs challenging SRA's standing, which arguments this Court decisively denied; to
filing an entirely improper mirror-action declaratory judgment suit in the Northern District of
California, which suit that court stayed; to attempting to reopen a long-closed proceeding in a
California bankptcy court, which proceeding that court dismissed; and others.
19
In addition to considering defendants' excuses for failing to meet their invalidity
contentions deadline, cours assessing whether to grant leave also consider "the importance of
what the Court is excluding, () the potential prejudice if the Cour allows the thing that would be
excluded, and () the availability of a continuance to cure such prejudice." Ergotron, 250 F.R.D.
at 286. These factors too weigh against Defendants' motion. As to the first, Defendants have
failed to establish that the proffered prior art references are important. Defendants' argument is
conclusory: "The prior art references that Defendants seek to add to their invalidity contentions
are vital to their defenses. Particularly, each new prior art reference either anticipates or, in
combination with other references, renders obvious the asserted claims. Further, the more
specific combinations of references that Defendants identify are important to their invalidity
defenses." (Defs.' Mot. at 7-8.) Such empty assertions-surely in every case the defendant
deems its proffered references "vital" and "important"-with no supporting basis whatsoever
cannot sustain Defendants' request for an unprecedented extension of its deadlines. In this
instance, further, Defendants seek to add ten references on top of the over 100 that they have
already introduced. Defendants themselves admit that they were aware of almost half of the
proffered references before the original deadline. (See id. at 5-6.) If in fact the references were
so "vital" and "important," one would have expected Defendants to have introduced them one
year ago. In any event, as this Cour has ruled, the notion that unasserted prior art is "vital" to a
party's defense is negated where, as here, the defendant "was on notice of the rules, had plenty of
time to comply, and had suffcient information to guide an appropriate disclosure of
information." Finisar, 424 F. Supp. 2d at 902. The "importance" prong weighs against
Defendants' motion.
20
The "prejudice" prong also weighs against Defendants' motion. This Court has found
prejudice to the plaintiff where "( e )xtensive additional research would be needed, perhaps
requiring experts in new fields . . . (and where) (0 )bviously there would be the additional
expense as the experts and (the plaintiffJ's attorneys reviewed the references and determined
how they fit into (the defendant)'s asserted defenses." Id. Here, SRA has already spentwasted-hundreds of thousands of dollars reviewing Defendants' original, grossly overbroad
invalidity contentions. This has taken months of expert and attorney time that SRA needed to
conduct other aspects of this litigation. Defendants' proposed additional prior art references
would require SRA to expend even more expert and attorney resources that it simply cannot
allocate to that task. Defendants should not be permitted to force SRA to waste more months
and additional thousands, when they already are to blame for causing gross inefficiencies
throughout this litigation.
Finally, the "continuance" prong weighs against Defendants' motion. This case has
already been on fie for over two years.4 Milions of dollars in litigation expenses have already
been spent, on the expectation that the parties' contentions would remain the same as they have
since January 2009. Unilateral delays would not serve the interests of justice. As this Court has
written, "there is always the possibility of more delay. . . , but extensions of deadlines canot be
the answer to every late disclosure of information. Enough time and money wil eventually cure
any prejudice caused by late disclosure of information, but that wil not result in the just, speedy,
and inexpensive determination of every action." Id. (emphasis in original; internal quotation
marks omitted).
4 This case is not "stil in its early stages," as Defendants contend (Defs.' Mot. at 1), though SRA
admits that it did fight lAC's and Lycos's using that boilerplate language in a recent Joint
Motion to Further Extend Scheduling Deadlines.
21
CONCLUSION
In short, Defendants' invalidity contentions should be stricken, and Defendants should be
required to amend their invalidity contentions within ten days ofthis Court's order, setting forth,
along with specific claim charts, no more than five obviousness combinations and five
anticipatory prior art references per claim. Further, Defendants' unprecedented attempt to
further expand their noncompliant invalidity contentions should be denied.
Z¡tt~ /(1 ~
Lee L. Kaplan
,
LEAD ATTORNEY
State Bar NO.1 1094400
SMYSER KAPLAN & VESELKA, L.L.P.
700 Louisiana, Suite 2300 Houston, Texas 77002 (713) 221-2323 (713) 221-2320 (fax)
lkaplan~skv.com
Victor G. Hardy State Bar No. 00790821 Andrew G. DiNovo State Bar No. 00790594 Adam G. Price State Bar No. 24027750 Jay D. Ellwanger State Bar No. 24036522
DiNovo PRICE ELLWANGER HARDY LLP
7000 North MoPac Expressway Suite 350 Austin, Texas 78731 (512) 681-4060 (512) 628-3410 (fax) vhardy~dpelaw.com
22
Of counsel:
S. Calvin Capshaw State Bar No. 03783900 Elizabeth L. DeRieux State Bar No. 05770585
CAPSHAW DERIEUX
1127 Judson Road, Suite 220 P.O. Box 3999 Longview, TX 75606-3999 (903) 236-9800
(903) 236-8787 (fax)
ccapshaw(icapshawlaw.com
Robert M. Parker State Bar No. 15498000 Robert C. Bunt State Bar No. 00787165 Charles Ainsworth State Bar No. 0078352
PARKER, BUNT & AINSWORTH, P.C.
100 East Ferguson, Suite 1 1 14
Tyler, Texas 75702 (903) 531-3535 (903) 533-9687 (fax)
CERTIFICATE OF SERVICE
The undersigned hereby certifies that all counsel of record who are deemed to have consented to electronic service are being served with a copy of this document via the Court's CM/ECF system per Local Rule CV-5(a)(3) on January 20, 2010.
Lee L. Kaplan
~lb
CERTIFICATE OF CONFERENCE
I hereby certify that counsel has complied with the meet and confer requirement in Local
Rule CV-7(h). This motion is opposed. The required conferences were conducted by
23
teleconference between Plaintiff s counsel and Defendants' counsel in late 2009, and the parties' good faith discussions conclusively ended in an impasse due to fundamentally differing
interpretations of the requirements imposed on Defendants by P.R. 3-3. Accordingly, this
motion is presented to this Court for determination.
Lee L. Kaplan
~¿i-
,
24
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