University of Virginia Patent Foundation v. General Electric Company
Filing
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MEMORANDUM AND ORDER denying without prejudice 75 Defendant's Motion to Compel; stricken as improperly filed 82 GE's reply brief and denying 83 Motion for Leave to File for UVAPF. Signed by Magistrate Judge Joel C. Hoppe on 8/14/15. (jcj)
UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF VIRGINIA
CHARLOTTESVILLE DIVISION
UNIVERSITY OF VIRGINIA
PATENT FOUNDATION,
Plaintiff,
v.
GENERAL ELECTRIC COMPANY
d/b/a GE HEALTHCARE,
Defendant.
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Civil Action No. 3:14cv51
MEMORANDUM & ORDER
By:
Joel C. Hoppe
United States Magistrate Judge
Before the Court is Defendant General Electric Company’s (“GE”) motion to compel
responses to interrogatories 12 and 13, ECF No. 75, and brief in support, ECF No. 75-1. Plaintiff
University of Virginia Patent Foundation (“UVAPF”) filed a brief in opposition, ECF No. 81,
and the matter is ripe for decision. 1 Having considered the motions and supporting documents,
the Court denies the motion without prejudice.
This case concerns a patent for magnetic resonance imaging (“MRI”). UVAPF alleges
that GE infringed upon Patent No. RE44,644, titled “Method and apparatus for spin-echo-train
MR imaging using prescribed signal evolutions.” The history of the ‘644 patent begins with a
provisional application, No. 60/257,182, filed by UVAPF on December 21, 2000. UVAPF
followed the provisional application with an international application under the Patent
Cooperation Treaty (“PCT”) on December 21, 2001. UVAPF then filed U.S. Patent No.
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On August 4, 2015, GE filed a further reply brief in support of its motion, ECF No. 82,
prompting UVAPF to request leave to file a responsive letter brief the same day, ECF No. 83. In
a conference call on July 17, 2015, this Court outlined a specific briefing schedule for the instant
dispute, with GE’s motion to compel due by July 24, 2015, and UVAPF’s response due by July
31, 2015, ECF No. 72. The Court did not authorize additional briefing, nor did it authorize
filings past July 31, 2015. Accordingly, GE’s reply brief will be stricken from the record, and I
will deny UVAPF’s request to file a letter brief. Cf. Order, John Doe v. Washington and Lee
University, No. 6:14cv52 (W.D. Va. May 14, 2015) (Moon, J.), ECF No. 47 (ordering counsel to
pay $300.00 for filing a brief that exceeded the page limit set forth in the Court’s pretrial order).
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7,164,268, which issued on January 16, 2007. Compl. Ex. A, at 2, ECF No. 1-1. The ‘644 patent
was filed on January 15, 2009, as a reissue of the ‘268 patent. Id. During the pendency of the
‘644 patent, UVAPF filed a second reissue patent, No. 14/053,190, which is a continuation of the
‘644 patent. The United States Patent and Trademark Office has notified UVAPF that it would
allow the ‘190 reissue application, and once it issues, UVAPF intends to file an amended
complaint adding the ‘190 patent to this case. See Joint Amended Request to Modify Proposed
Pretrial Order at 1, ECF No. 33. UVAPF asserts that both the ‘644 and ‘190 patents claim
priority through the PCT application to the filing date of the provisional application, December
21, 2000.
GE propounded interrogatories 12 and 13 as part of its First Set of Interrogatories.
Interrogatory 13 requests UVAPF to identify on an element-by-element basis why each claim it
asserts in the ‘644 and ‘190 patents satisfies the written description requirement of 35 U.S.C. §
112. Def. Br. in Supp. Ex. C, at 47–48. Subsumed within this interrogatory, GE also asks
UVAPF to identify each element of each asserted claim that UVAPF contends is described by
the provisional or PCT applications, with page and line citations to the old applications. Id.
Interrogatory 12 requests UVAPF to identify on an element-by-element and combination-ofelements basis why each claim it asserts in the ‘644 and ‘190 patents is disclosed by the
provisional or PCT applications, with page and line citations to the applications. Id. at 43–46.
UVAPF objected on the grounds that the interrogatories are unduly burdensome,
constitute improper burden shifting, and require premature provision of expert opinions on
validity. GE proposed a compromise whereby UVAPF would provide only citations in chart
form on a claim-by-claim rather than element-by-element basis, similar in structure and content
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to charts UVAPF submitted as part of its ‘190 reissue application. 2 UVAPF rejected this
proposal and reiterated its objections.
I. Discussion
Federal Rule of Civil Procedure 33(a)(2) provides for interrogatories that request an
opinion or contention related to the facts of a case or the legal application of those facts.
Contention interrogatories, however, can be of limited use “before substantial documentary or
testimonial discovery has been completed” if the parties have not yet been able to narrow the
dispute or collect key facts. In re Convergent Techs. Sec. Litig., 108 F.R.D. 328, 338 (N.D. Cal.
1985); see also In re eBay Seller Antitrust Litig., No. C07-1882 JF (RS), 2008 WL 5212170, at
*2 (N.D. Cal. Dec. 11, 2008) (noting answers to contention interrogatories early in the discovery
process “would be of questionable value to the goal of efficiently advancing the litigation”). Rule
33 thus grants courts discretion to “order that the interrogatory need not be answered until
designated discovery is complete.” Fed. R. Civ. P. 33(a)(2).
A magistrate judge in the Northern District of California fashioned four guidelines to
evaluate early contention interrogatories in In re Convergent Technologies Securities Litigation:
Under these guidelines, the moving party must demonstrate that interrogatory
responses would contribute meaningfully to: (1) clarifying the issues in the case;
(2) narrowing the scope of the dispute; (3) setting up early settlement discussion;
or (4) exposing a substantial basis for a motion under Rule 11 or Rule 56.
eBay Antitrust Litig., 2008 WL 5212170, at *1 (citing Convergent Techs., 108 F.R.D. at 338–
39). GE argues that the general guidelines in Convergent Technologies are rendered irrelevant
for this motion by the Northern District of California Patent Local Rules, which the parties have
agreed to follow. Despite GE’s objections, the Convergent Technologies guidelines have been
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Specifically, UVA would provide a chart identifying for each asserted claim in the ‘644 and
‘190 patents page and line citations to the portions of the provisional or PCT applications that
UVAPF contends prove the claims’ compliance with sections 112 and 251.
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employed in patent litigation before, see, e.g., HTC Corp. v. Tech. Properties Ltd., No. C0800882 JF HRL, 2011 WL 97787, at *2 (N.D. Cal. Jan. 12, 2011), and they provide a useful
starting framework upon which to structure the analysis and incorporate the specialized
discovery steps provided for in patent local rules. While the objecting party bears the burden of
showing that a discovery request is improper, Selective Way Ins. Co. v. Schulle, No. 3:13cv40,
2014 WL 462807, at *1 (W.D. Va. Feb. 5, 2014), I will also consider whether GE has
demonstrated that “early answers to its contention questions will materially advance the goals of
the Federal Rules of Civil Procedure.” Convergent Techs., 108 F.R.D. at 338–39.
GE provides two primary reasons why the Court should compel responses to
interrogatories 12 and 13 at this stage in the litigation. First, GE needs them so that it can
determine whether the claims in the ‘644 and ’190 patents are entitled to the provisional
application’s priority date. Def. Br. in Supp. 1. Priority dates are key to determining the world of
applicable prior art GE can use to challenge the claims’ validity, and GE argues that it needs this
information to prepare its invalidity contentions. Id. at 5–7. Second, the requested information is
directly relevant to GE’s defenses and counterclaims, specifically the validity of the ‘644 patent
and whether the new claims added in the reissue process satisfy sections 112 and 251. Id. at 1, 7–
8. Both of these arguments go to the first Convergent Technologies factor, clarifying the issues in
the case. The question for the Court is thus whether GE’s arguments provide “plausible grounds
for believing that securing early answers to its contention questions will materially advance the
goal[]” of clarifying the issues in the case. Convergent Techs, 108 F.R.D. at 339.
Considering first the priority argument, GE is undeniably entitled to know the alleged
priority dates for the claims of the patents in issue. See Northern District of California Patent
Local Rule 3-1(f) (requiring party alleging infringement to provide within fourteen days of the
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initial case management conference information including, “[f]or any patent that claims priority
to an earlier application, the priority date to which each asserted claim allegedly is entitled”);
Lamoureux v. Genesis Pharm. Servs., Inc., 226 F.R.D. 154, 160 (D. Conn. 2004) (“The dates in
question—when the plaintiffs conceived and reduced to practice the invention claimed with
regard to the [patent-in-suit]—are incontrovertibly relevant to defenses and counterclaims based
upon statutes which turn almost exclusively on such dates.”). In the case GE relies upon,
McKesson Info. Solutions, LLC v. Epic Sys. Corp., 242 F.R.D. 689, 692 (N.D. Ga. 2007), the
plaintiff flatly refused the defendant’s request for information about when the patent-in-issue was
invented. 242 F.R.D. at 691–92. The ‘644 patent, on the other hand, facially tracks its priority to
the provisional application. Compl. Ex. A, at 2; see Def. Br. in Supp. 11. Additionally, in its
infringement contentions submitted in June 2015, UVAPF provided the dates of conception for
each claim. ECF No. 75-7 at 6. McKesson and the local rules advocate for the provision of basic
discovery concerning priority dates for the patents-in-issue early in the discovery process, but
they do not speak to the detail or depth of that discovery.
The information GE requests in interrogatories 12 and 13 would be helpful in its attempt
to evaluate UVAPF’s claims of priority; claims in a reissue patent must meet the written
requirements of sections 112 and 251 in order to claim the priority of previous patents or patent
applications. Antares Pharma, Inc. v. Medac Pharma, Inc., 771 F.3d 1354, 1358 (Fed. Cir.
2014). Those same requirements, however, are also fundamental considerations for evaluating
the validity of the patents-in-issue. Considering the significant overlap between the two purposes
for this evidence, the value of the interrogatory responses for determining claim priority should
not decide the motion to compel if efficient management of discovery concerning claim validity
suggests a different schedule.
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As GE points out in its brief, Def. Br. in Supp. 5, the primary purpose of the patent rules
adopted in this case is to “provide for a streamlined mechanism to replace the series of
interrogatories that accused infringers would likely have propounded in its absence.” Shire, LLC
v. Impax Labs, Inc., No. 10-cv-05467, 2013 WL 1786591, at *2 (N.D. Cal. Apr. 25, 2013)
(quoting FusionArc, Inc. v. Solidus Networks, Inc., No. C06-06770 RMW (RS), 2007 WL
1052900, at *2 (N.D. Cal Apr. 5, 2007)). Patents often involve hundreds of claims that could
potentially be infringed, and patent rules are designed to efficiently narrow the dispute to the few
claims at the heart of the case through a series of standardized steps.
Evaluating interrogatories 12 and 13 with that objective in mind, GE’s motion is
premature for two primary reasons, the first being the status of the discovery. This litigation is
nine months old, and the parties are still moving through the beginning stages of discovery.
UVAPF has served its infringement contentions, and GE will soon serve its invalidity
contentions. There are still 170 claims asserted in this case—many more than will actually be
contested at the close of discovery and likely many more than will be contested after GE submits
its invalidity contentions. See Pl. Br. in Opp. 12 n.15 (“Until UVAPF obtains GE’s core technical
documents, it cannot whittle down its asserted claims.”). If UVAPF were to answer the
interrogatories now, it would provide information on many claims that will not ultimately be
relevant to this lawsuit. See Bonutti Skeletal Innovations, LLC v. Linvatec Corp., No. 6:12-cv1379-ORL-22TBS, 2014 WL 186123, *4 (M.D. Fla. Jan. 16, 2014) (denying motion to compel
all factual and legal support, on a claim-by-claim basis, that the patent-in-suit’s claims are not
invalid because it “ask[ed] Bonutti to provide a detailed explanation of a substantial part of its
case before expert discovery on these issues ha[d] taken place,” which the court considered
“likely to result in a waste of time and resources”).
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Secondly, besides speaking to priority, the interrogatories at issue ask UVAPF to identify
part of the evidence it will rely upon to counter GE’s claims that the ‘644 and ‘190 patents are
invalid. Asking a party to defend the validity of its claims before it knows which claims are
under attack would disrupt the orderly development of a patent case. Fittingly, UVAPF does not
contend that it will never answer the interrogatories, only that to do so now is premature, Pl. Br.
in Opp. 17. See Gen-Probe, Inc. v. Becton, Dickinson And Co., Civ. No. 09cv2319 BEN (NLS),
2010 WL 2011526, at *1–2 (S.D. Cal. May 19, 2010) (denying motion to compel documents and
support for the defendant’s affirmative defenses when “the parties have not yet completed
substantial discovery, and [the defendant] does not object to responding further to this contention
interrogatory as discovery progresses”).
Courts that have compelled parties to answer interrogatories similar to those at issue do
so after the parties have undergone more discovery and narrowed the issues through invalidity
contentions, claim construction, depositions, or expert disclosures. See, e.g., Order at 1–3, SFA
Sys., LLC v. Amazon.com, Inc., No. 6:11-cv-052-LED (E.D. Tex. Apr. 11, 2013), ECF No. 400
(denying without prejudice motion to compel SFA’s response to an interrogatory seeking its
invalidity rebuttal contentions prior to Amazon providing its expert’s invalidity report); HTC
Corp. v. Tech. Props. Ltd., No. C08-00882 JF (HRL), 2011 WL 97787, at *3 (N.D. Cal. Jan. 12,
2011) (“[D]iscovery is still in full-swing, and Defendants have not shown a real need for
supplemented responses at this point in time. HTC, however, shall supplement its responses to
these interrogatories within 30 days after the filing of the parties' Joint Claim Construction and
Pre–Hearing Statement as it proposed.”); Gardner v. Toyota Motor Corp., No. C08-0632 RAJ,
2009 WL 8732016, at *1 (W.D. Wash. May 6, 2009) (upholding motion to compel evaluation of
four claims in light of six specific prior art references identified in invalidity contentions).
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While interrogatories 12 and 13 are not fundamentally improper, in light of the current
status of this litigation, they “need not be answered until [additional] discovery is complete.”
Fed. R. Civ. P. 33(a)(2). I will require UVAPF to provide substantive responses to the
interrogatories at some point after the presiding District Judge issues his claim construction
order. I leave it to the parties to confer as to the precise timing of the responses. If they are
unable to agree, they may submit the dispute, following the procedure provided in the Court’s
Order of August 11, 2015, ECF No. 86, no sooner than 30 days after the District Judge issues the
claim construction order.
I therefore DENY WITHOUT PREJUDICE Defendant’s Motion to Compel. ECF No.
75. GE’s reply brief, ECF No. 82, is STRICKEN as improperly filed, and UVAPF’s motion for
leave to file, ECF No. 83, is DENIED.
It is so ORDERED.
ENTERED: August 14, 2015.
Joel C. Hoppe
United States Magistrate Judge
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