Intelligent Verification Systems, LLC v. Microsoft Corporation et al
Filing
384
MEMORANDUM OPINION AND ORDER that IVS's Motion is DENIED with respect to IVS's request that the Court strike portions of the Bhagavatula Report. Regarding IVS's request that the Court limit the Defendants' invalidity arguments and prior art references, the undersigned RECOMMENDS that the Court DENY WITHOUT PREJUDICE this request. Signed by Magistrate Judge Lawrence R. Leonard and filed on 2/25/2015. (rsim, )
UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
Norfolk Division
INTELLIGENT VERIFICATION
SYSTEMS, LLC,
Plaintiff,
Case No. 2:12-cv-525
MICROSOFT CORP., etaL,
Defendants.
MEMORANDUM OPINION AND ORDER
This matter is before the Court on Plaintiff Intelligent Verification Systems, LLC's
("IVS") Motion to Strike Portions of the Expert Report of Dr. Vijayakumar Bhagavatula (the
"Bhagavatula Report"), to Preclude Defendants From Relying on Certain Alleged Prior Art
References, and to Limit the Number of Invalidity Arguments and References. ECF No. 237
(the "Motion"). Defendants Microsoft Corp. and Majesco Entertainment Co. (collectively, the
"Defendants") jointly opposed, ECF No. 246, and IVS replied, ECF No. 250. As IVS neither
requested this Motion be set for hearing nor heard on the pleadings in accordance with Eastern
District of Virginia Local Civil Rule 7(E), the Court dispenses with oral argument and
adjudicates this Motion on the pleadings alone. IVS's requests in this Motion are two-fold: first,
IVS "move[d] the Court to strike all portions of the Bhagavatula Report that rely on alleged prior
art references for invalidity that were not fully disclosed or the subject of a claim chart in
Defendants' responses to IVS Interrogatory No. 6;1" and second, IVS "move[d] this Court to
order Defendants to narrow their invalidity arguments." ECF No. 238 at 2. The Court will
1Interrogatory No. 6 read: "State indetail each and every fact upon which you base any denials or affirmative
defenses asserted in Your Answer to IVS' Complaint." ECF No. 238, attach. 4 at 3.
consider each of these arguments in turn.
I. Prior Art References Not Included in Claim Charts
IVS's attack on the Bhagavatula Report is based entirely on the contention that the
"Defendants' fail[ed] to provide adequate information during fact discovery."
Id. at 8 n.2.
Although IVS made general allegations that the Defendants did "not fully disclose[]" the prior
art relied upon in the Bhagavatula Report, the crux of IVS's argument is that the Defendants
failed to identify these prior art references in claim charts during fact discovery. Id. at 1, 12-16.
Indeed, IVS claimed that "numerous different federal district courts" have barred "first-time
identifications of specific reference combinations to advance obviousness theories" when parties
"failed to include [those references] in their invalidity charts.'" Id. at 12, 14 (emphasis added).
In total, IVS requested that the Court strike nineteen prior art references from the Bhagavatula
Report that were not produced in claim charts and preclude any further reliance on them by the
Defendants forthwith. Id. at 14-16. IVS argued that to allow the Defendants to rely on these
prior art references would prejudice IVS. Id. at 14. As an example of prejudice, IVS claimed
that after Defendant Microsoft Corp. cancelled the deposition of Dr. Alex Pentland, an author of
prior art publications disclosed by the Defendants, and did not include prior art publications
authored by Dr. Pentland in its claim charts, IVS believed that the "Defendants would not be
substantively relying on the new alleged references by Dr. Pentland in their invalidity case." Id.
In response, the Defendants claimed that Interrogatory No. 6 requested only the factual
bases for each of the Defendants' defenses, and thus, the Defendants' summary disclosure of
prior art references, albeit not organized in claim chart fashion, was sufficient. ECF No. 246 at
2-5. The Defendants highlighted the fact that IVS never requested claim charts: "if Plaintiff
wanted invalidity claim charts, it simply had to ask for claim charts, as Defendants did in seeking
Plaintiffs infringement contentions. Rather, Plaintiff opted to ask only for facts ...." Id. at 1011. Additionally, Microsoft stated that after it informed IVS that Dr. Pentland's deposition was
cancelled, Microsoft identified additional publications authored by Dr. Pentland in its responsive
discovery disclosures. Id. at 12. This action, the Defendants argued, should have conveyed to
IVS that the Defendants intended to rely on Dr. Pentland's prior art, regardless of the fact that his
deposition was cancelled and his prior art publications were not included in claim charts. Id.
A. The Defendants Were Not Required by Order or Local Rules to Provide Claim Charts
As a preliminary matter, it appears that IVS does not dispute that each of the prior art
references identified in its Motion were, in fact, disclosed during fact discovery, and rightly so.
IVS's contention is entirely based on the form of the Defendants' disclosure of those prior art
references; specifically, that they were summarily disclosed in response to Interrogatory No. 6,
as opposed to being organized in claim charts. IVS cited numerous cases for the proposition that
expert reports may not "include[] first-time identifications of specific reference combinations to
advance obviousness theories." ECF No. 238 at 12 (citing cases). However, the cases cited by
IVS in support of the proposition that the Defendants should be barred from relying on any prior
art references not included in their claim charts are unpersuasive. In some, the parties were
required to file claim charts either by local patent rules, see e.g., Verinata Health, Inc. v.
Sequenom, Inc., No. 12-00865, 2014 U.S. Dist. LEXIS 116382, at *3, 7 (N.D. Cal. Aug. 20,
2014); Merck Sharpe & Dohme Corp. v. Sandoz, Inc., No. 12-3289, 2014 U.S. Dist. LEXIS
52548, *3-5 (D.N.J. April 16, 2014); Asus Computer Int'I v. Round Rock Research, LLC, No. 12cv-02099, 2014 U.S. Dist. LEXIS 50728, at *5 (N.D. Cal. Apr. 11, 2014); Mediatek Inc. v.
Freescale Semiconductor, Inc., No. ll-cv-5341, 2014 U.S. Dist. LEXIS 22442, at *2-3 (N.D.
2 All of the disputed prior art references were disclosed in discovery. Compare ECF No. 238 at 15-16, with id.
attach. 7 at 23, attach. 4 at 5, 7; ECF No. 244, attach. 3 at 18 n.l, 21, 23.
Cal. Feb. 21, 2014), or court order, see, e.g., ePlus, Inc. v. Lawson Software, Inc., No.
3:09cv620, 2010 WL 3219318, at *l-2 (E.D. Va. Aug. 13, 2010) (relying on a scheduling order
which required the defendant to file a statement of invalidity defenses); Anascape, Ltd. v.
Microsoft Corp., No. 9:06-CV-158, 2008 U.S. Dist. LEXIS 111917, *4-5 (E.D. Texas May 1,
2008) (same), neither of which occurred in the present case. Moreover, some cases barred prior
art when they were disclosed after discovery was completed, not based on the form of the
disclosure during discovery. See, e.g., Praxair, Inc. v. ATMI, Inc., 231 F.R.D. 457, 464 (D. Del.
2005) (barring references to prior art disclosed during an extension of fact discovery, which had
been permitted only "to bring closure to open discovery issues, not to open new discovery
issues"), rev'd on other grounds, 543 F.3d 1306 (Fed. Cir. 2008); Takeda Chem. Indus., Ltd. v.
Mylan Labs., Inc., No. 03 Civ. 8253, 2005 WL 1812996, at *1 (S.D.N.Y. Aug. 3, 2005) (barring
invalidity contentions and prior art references that had not been disclosed in fact discovery).
IVS also argued that the Defendants' "minimal response is [sic] not providing a full and
complete answer" to Interrogatory No. 6 "falls short of the type of information required under
the Supreme Court's decision in KSR Intf'l] Co. v. Teleflex Inc." ECF No. 250 at 5. However,
IVS's reliance on KSR Int'l Co. v. Teleflex, Inc. for this proposition is misplaced.3 IVS
interpreted KSR Int 7 Co. to apply to discovery disclosures, when, in fact, the statement cited by
IVS applies to a court's analytical review of the parties' proffer. Indeed, the Supreme Court's
holding that "this analysis should be made explicit," refers to what is "necessary for a court to
3IVS quoted KSR Int'l. Co. v. Teleflex Inc. as follows:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effect of
demands known to the design community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion claimed by the patent at issue. To
facilitate review, this analysis should be made explicit. See re Kahn, 441 F.3d 977, 988 (CA Fed. 2006)
("[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to support the legal conclusions of
obviousness.").
ECF No. 250 at 5-6 (quoting 550 U.S. 398, 418 (2007)).
look to ... in order to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue," and is explicitly premised on the need to
"facilitate review" of the court's decision. KSR Int'l Co., 550 U.S. at 418. To equate the level of
disclosure required in discovery with the standard's undergirding a court's review of patent
claims misstates KSR Int7 Co. Accordingly, none of the cases relied upon by IVS are persuasive
for their proffered purpose, and IVS has failed to identify any controlling legal authority which
would have compelled the Defendants to disclose the prior art references in claim chart form in
response to Interrogatory No. 6.
Moreover, if IVS had required claim charts, IVS should have asked for those claim charts
in discovery.
IVS cannot now complain of an error attributable to its own drafting of
interrogatory requests.
IVS claimed that "Microsoft's argument that 'if Plaintiff wanted
invalidity charts, it simply had to ask for claim charts,' would mean that whenever parties in the
future have discovery disputes, the disputes cannot be resolved by counsel's letter reflecting the
resolution inasmuch as the letter cannot be relied upon at a later date." ECF No. 250 at 5. The
correspondence between the parties, however, reflects no such "resolution." Rather, after IVS
wrote Microsoft in December 2013 that "[b]ased on Microsoft's supplemental responses and
claim chart exhibits, IVS's understanding is that Microsoft will only rely on those references
included in its 29 claim charts," ECF No. 238, attach. 18, Microsoft responded that "[a]s drafted,
and certainly together with the claim charts that we served as Exhibits, Microsoft's response
identifies for you in more than sufficient detail the prior art upon which Microsoft is presently
relying," id, attach. 20 (emphasis added).
Clearly, Microsoft did not agree with IVS's
construction of the defense's reliance on prior art because Microsoft referenced the entirety of its
response to Interrogatory No. 6 after receiving IVS's letter. IVS's attempt to unilaterally limit
the Defendants to only those prior art references identified in the claim charts approximately
eight months before the close of fact discovery can hardly be considered binding on the
Defendants, especially considering that the Defendants made four supplemental responses
thereafter. See ECF No. 246 at 3-4.
Finally, IVS's only argument, beyond conclusory allegations, as to any prejudice it
experienced involved the Defendants' cancellation of Dr. Pentland's deposition. ECF No. 238 at
14. IVS argued that because the Defendants did not provide claim charts for Dr. Pentland's prior
art publications and the Defendants canceled Dr. Pentland's deposition, IVS believed the
Defendants would not rely on Dr. Pentland's prior art. This argument fails, however, as after the
Defendants canceled Dr. Pentland's deposition, the Defendants continued to disclose and
identify prior art publications authored by Dr. Pentland. ECF No. 246 at 12. It would be
perplexing indeed to hold the Defendants accountable for IVS's one-sided interpretation of
singular incidents in discovery which disregard the Defendants' disclosure thereafter, or in the
case of counsels' correspondence outlined above, the Defendants' explicit communication.
B. No Mutual Understanding RegardingInterrogatory No. 6
IVS also argued that, regardless of the plain language of the Interrogatory, the
Defendants understood Interrogatory No. 6 to require more than just a list of prior art references,
and accordingly, should be barred from relying on any prior art references not included in the
claim charts. IVS presented two arguments to prove that the Defendants understood that
Interrogatory No. 6 required more than simply a list patents and publications. First, IVS again
relied on its December 2013 letter which stated that "[b]ased on Microsoft's supplemental
responses and claim chart exhibits, IVS's understanding is that Microsoft will rely on those
references included in its 29 claim charts." ECF No. 238, attach. 18. IVS claimed that the
Defendants "ignorfed]" this statement, and if the Defendants had taken the position they now
hold, that Interrogatory No. 6 only requested facts, "the parties would have had an opportunity
either to work toward a resolution or to seek a court decision on the issue. . .. Microsoft did not
raise any objection or refusal to answer in accordance with IVS's understanding of the
interrogatory." ECF No. 250 at 2-3. Second, IVS argued that Microsoft's initial response to
Interrogatory No. 6, which provided a disclaimer4 and a response5 prior to the list of patents and
publications, "makes it clear that Microsoft understood Interrogatory No. 6 to require contentions
and some detail beyond a list of references."
Id. at 3.
IVS additionally referenced the
Defendants' supplemental responses which included citations to case law and other arguments.
See id. at 4. In response to these arguments, the Defendants claimed that their "diligent work to
identify references and provide claim charts, narratives, and citations to specific references
should not be used to punish Defendants," when "the interrogatory merely asked for the factual
bases for Defendants' defense." ECF No. 246 at 10.
Preliminarily, Interrogatory No. 6 is not a contention interrogatory.6 A contention
4Asa preliminary disclaimer to Interrogatory No. 6, Microsoft stated:
Because there has been no claim construction or expert discovery in this case, and because IVS has not
yet provided its contentions with regard to any alleged infringement, on which it bears the burden of
proof, Microsoft's response to this Interrogatory is preliminary and subject to further supplementation,
addition, or change.
ECF No. 238, attach. 4 at 3.
5After the disclaimer outlined supra n.4, Microsoft stated:
Subject to and without waiving its objections, Microsoft contends that at least the following elements of
the asserted claims of the Asserted Patent are not found in the Accused Products and/or are not required
by the use of Accused Products: (1) "providing entertaining interaction with said plurality of animate or
inanimate objects," (2) "entertaining interaction in response to said output signal indicative of
recognition," (3) "entertaining interaction in response to said output facial image recognition signal," (4)
"providing a facial expression recognition signal indicative of recognition of said expression," and (5)
"sound controls are response to said facial expression recognition signal to modify the sounds produced
by said toy in relation to said facial expression recognition signal." Microsoft further contends that the
claims of the Asserted Patent are invalid, at least in view of one or more of the following references
(alone or in combination):... .[listing patents and publications]
ECF No. 238, attach. 4 at 3-4.
6To the extent that IVS argued that Interrogatory No. 6 was a contention interrogatory, that argument was not fully
developed and was apparently limited to one footnote. ECF No. 238 at 11 n.4. Moreover, neither of the cases cited
in that footnote are persuasive. The first considered when responses to a contention interrogatory were required, not
interrogatory requires that "an answer to the interrogatory involves an opinion or contention that
relates to fact or the application of law to fact." Fed. R. Civ. P. 33(c) ("Rule 33(c)"). As is
apparent from the plain reading of Interrogatory No. 6, it only requested the factual bases for the
Defendants' denials and affirmative defenses. See ECF No. 238, attach. 4 at 3 ("State in detail
each and every fact upon which you base any denials or affirmative defenses asserted in Your
Answer to IVS' Complaint"). Strikingly absent from Interrogatory No. 6 is any request for "an
opinion or contention" as contemplated by Rule 33(c). Indeed, "the Interrogatory] do[es] not
ask Defendants to explain why or how, as a matter of opinion or otherwise, such prior art
establishes the invalidity of Plaintiffs patent, nor do[es] the Interrogator [y] require Defendants
to advance legal argument in support of their defense or counterclaim." Dot Com Entm't Grp.,
Inc. v. Cyberbingo Corp., 237 F.R.D. 43, 44 (W.D.N.Y. 2006) (determining that an interrogatory
requesting the defendants to "[s]tate all facts upon which defendants base their allegation" was
not a contention interrogatory"). Accordingly, Interrogatory No. 6 was simply requesting facts,
not contentions.
Moreover, even to the extent that Interrogatory No. 6 could be considered a contention
interrogatory, there is no dispute that the Defendants did disclose all prior art references
identified by IVS in the present Motion. Apparently, IVS's only quibble with the Defendants'
response is that these references were not provided in claim chart form, as IVS does not identify
any specific legal argument, opinion, or contention that was not disclosed previously.
IVS
the present question of whether the interrogatory was in fact a contention interrogatory. LifeNet Health v. LifeCell
Corp., No. 2:13cv486, 2014 WL 4162113, at *6 (E.D. Va. Aug. 14, 2014) (holding that contention interrogatories
must be answered before the close of discovery). The second case held that in response to an interrogatory request
for a "detailed factual basis for each defense," the plaintiff was required to "providef] a detailed description of the
facts." Elite Fin. Servs., Inc. v. Adams (In re Adams), No. 04-11179-W, 2005 Bankr. LEXIS 3551, at *8-9 (D.S.C.
Feb. 23, 2005). The bankruptcy court gave no indication of what a detailed description of the facts entailed, and
obviously, as In re Adams was not a patent case, did not find that a detailed description necessarily required claim
charts. Indeed, IVS cited no case for the proposition that contention interrogatories necessarily require claim chart
responses when not compelled by order or local patent rules.
conclusorily argued that the Defendants "add[ed] new contentions after fact discovery ha[d]
closed," but IVS does not identify what contentions were not disclosed previously, beyond its
citation to prior art references not included in claim charts. ECF No. 250 at 4-5; see ECF No.
238 at 8-9. At no point in IVS's Motion, Memorandum in Support, or Reply does IVS identify
the substance of the opinions or contentions allegedly proffered for the first time in the
Bhagavatula Report.7 "[J]udges are not mind readers," and they cannot "conjure up questions
never squarely presented to them." Beaudett v. City of Hampton, 775 F.2d 1274, 1278 (4th Cir.
1985).
If IVS wished to argue that the Bhagavatula Report presented new opinions or
contentions not previously disclosed in response to Interrogatory No. 6, IVS needed to identify
those opinions and contentions beyond conclusory assertions.
Although pro se parties are
afforded liberal construction of their pleadings, represented parties are not. Backus v. City of
Parkersburg, 980 F. Supp. 2d 741, 745 (S.D.W. Va. 2013). Accordingly, to the extent that IVS
argued that the Defendants failed to disclose opinions and contentions beyond the identified prior
art references, the Court declines to delve into the mass of discovery responses and the expert
report to determine which sections of the Bhagavatula Report might rely on the allegedly
undisclosed opinions and contentions. IVS's failure to squarely identify those opinions and
contentions is ultimately fatal to any argument that the Defendants did not properly disclose
certain opinions and contentions previously.
II. Limiting Invalidity Arguments for Summary Judgment and Trial
Although Motions to Strike Expert Reports are generally non-dispositive matters which
magistrate judges may dispose of, in this case, IVS requested more than what would typically be
7In the proposed order attached with IVS's Motion, ECF No. 237, attach. 1, IVS included a section striking certain
portions of the Bhagavatula Report. It is unclear, however, whether these sections are to be struck for their reliance
on prior art references not previously identified in claim charts, or for relying on new opinions and contentions not
previously disclosed in response to Interrogatory No. 6. At no point does IVS list these sections in its Motion,
Memorandum in Support, or Reply.
considered within the scope of a Motion to Strike. IVS argued "as a separate matter" that the
Court should order the Defendants to limit their invalidity arguments and prior art references "to
no more than a total of five invalidity arguments and prior art references." ECF No. 238 at 1, 18.
Such an action may be considered "dispositive of a party's claim or defense," as necessarily
forcing the Defendants to reject some defenses and prior art references relied upon to this point
in the litigation. Fed. R. Civ. P. 72(a).
Magistrate judges may consider both non-dispositive and dispositive pretrial matters,
contingent on a district judge's differing standards of review. Non-dispositive matters are
reviewed by the district judge under a clearly erroneous or contrary to law standard of review;
while dispositive matters, for which a magistrate judge must issue proposed finds of fact and
conclusions of law, are reviewed de novo. 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 72(a)-(b).
These standards of review evince the constitutional weight attributed to the scope of a magistrate
judge's authority as the Constitution of the United States "requires that Article III judges
exercise final decision-making authority, and therefore, a district court judge must make the final
determination on dispositive matters." Segal v. L.C. Hohne Contractors, Inc., 303 F. Supp. 2d
790, 793 (S.D.W. Va. 2004).
Federal Rule of Civil Procedure 72, like 28 U.S.C. § 636(b),
categorizes the scope of a magistrate judge's authority into non-dispositive and dispositive
matters. See Fed. R. Civ. P. 72. Although 28 U.S.C. § 636 lists eight specific dispositive
motions, courts routinely "reach commonsense decisions rather than becoming mired in a game
of labels" when determining whether a matter is dispositive or non-dispositive. Segal, 303 F.
Supp. 2d at 794 (quoting 12 Charles Alan Wright, Arthur R. Miller & Richard L. Marcus,
Federal Practice & Procedure, § 3068.2 (2d ed. 1997)). A district judge ultimately determines
the categorization of a matter as dispositive or non-dispositive by the standard of review applied
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to the magistrate judge's decision, notwithstanding whether the magistrate judge handled the
matter entirely or only recommended findings of fact and conclusions of law. See e.g., Brown v.
Bridges, No. 12-CV-4947-P, 2015 WL 410062, at *3 (N.D. Tex. Jan. 30, 2015) ("The district
court, however, is not required to apply the more stringent review merely because the magistrate
judge has issued a recommendation."); Asterbadi v. Leitess, No. 1:04CV286(JCC), 2005 WL
2009276, at *3 (E.D. Va. 2005) (reviewing a magistrate judge's report and recommendation
under a clearly erroneous standard); Segal, 303 F. Supp. 2d. at 794-95 (same). Proceeding with
caution, then, as the action of limiting invalidity arguments has not yet been categorized as a
dispositive or non-dispositive matter within this Circuit, the undersigned issues the following as
a recommendation.
IVS argued that "[t]he Defendants' invalidity arguments are numerous and go beyond the
bounds of what could reasonably be presented at trial or in a summary judgment motion," and
accordingly, requested that the Court limit the number of invalidity arguments and prior art
references to be relied upon by the Defendants. ECF No. 238 at 16. Although "the Court... has
the authority to limit the number of invalidity arguments and prior art references that defendants
may assert," Certusview Techns., LLC v. S & N Locating Servs., LLC, No. 2:13cv346, 2014 WL
4930803, at *6 (E.D. Va. Sept. 30, 2014), IVS's argument is belied by developments in the case.
IVS contended that limiting the Defendants' invalidity arguments is necessary to "mak[e] the
case more manageable as the parties approach expert depositions, summary judgment motions,
and trial." ECF No. 238 at 17. However since IVS's Motion was filed, the parties have
necessarily streamlined their arguments as expert depositions have been finished, see ECF No.
246 at 5, and summary judgment briefing has been completed, see ECF Nos. 255, 260. Indeed,
apparently the Defendants were capable of narrowing their invalidity arguments and prior art
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references for summary judgment briefing, which, contrary to IVS's argument, is evidence of
their good faith intention to continue to streamline the case before trial. Thus, IVS's contention
that the Defendants' invalidity arguments and prior art references would bar "meaningful
dispositive motions practice," ECF No. 250 at 7, is fatally undermined by the streamlining that
has already occurred. Accordingly, in reliance on the Defendants' representation that they will
continue to streamline the case before trial, ECF No. 246 at 8, as demonstrated in the completed
summary judgment briefing, the Court should deny without prejudice IVS's Motion to the extent
that it requested that the Court limit the Defendants' invalidity arguments and prior art
references.
In conclusion, IVS's Motion is DENIED with respect to IVS's request that the Court
strike portions of the Bhagavatula Report. Regarding IVS's request that the Court limit the
Defendants' invalidity arguments and prior art references, the undersigned RECOMMENDS
that the Court DENY WITHOUT PREJUDICE this request.
The Clerk is DIRECTED to forward a copy of this Memorandum Opinion and Order to
all counsel of record.
It is so ORDERED.
Lawrence R.
United States Magistrate Judge
Norfolk, Virginia
February 25, 2015
This is contrary to IVS's contention that "[t]he case has not been streamlined by Microsoft." ECF No. 250 at 6.
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