Ultratec, Inc. et al v. Sorenson Communications, Inc. et al

Filing 504

ORDER granting 493 Plaintiffs' Motion in Limine #16. Signed by District Judge James D. Peterson on 9/22/15. (jat)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

ULTRATEC, INC. and CAPTEL, INC.,
ORDER ON PLAINTIFFS’
MOTION IN LIMINE 16
Plaintiffs,
v.

14-cv-66-jdp

SORENSON COMMUNICATIONS, INC. and
CAPTIONCALL, LLC,
Defendants.

Plaintiffs have moved in limine to exclude 15 prior art references that defendants
intend to use to show the state of the art pertinent to the ’398 patent. Defendants included
the 15 references on a section 282(c) notice served on August 27, 2015. But the references
were not included on defendants’ third (and final) amended invalidity contentions back in
February, 2015.
Defendants intone the wearying refrain that granting the motion would constitute
“reversible error,” because they are absolutely entitled to show the state of the art.
Defendants are correct that the obviousness analysis is expansive and flexible, and that
references like the ones at issue now might be relevant to show what was generally known in
the art at the time of the invention. But defendants miss the point, which is not whether the
15 references are relevant. The issue is whether the 15 references were properly disclosed in
this case. They were not.
I will accept defendants’ assertion that the 15 references were disclosed in Shenoi’s
January 16, 2015, report (although disclosing a patent by a Bates number is a questionable
practice, and defendants are a bit foggy about whether all the “disputed publications” were in
Shenoi’s report). But the problem is that after disclosing the Shenoi report, defendants

sought to amend their invalidity contentions to, among other reasons, “[r]educe the number
of prior art references relied upon and refine the claim charts for the ’398 Patent.” Dkt. 105.
That motion was granted, plaintiffs relied on it, and now defendants are stuck with their
Third Amended Invalidity Contentions. Dkt. 106, Ex. 3.
Defendants argue that the 15 references are “state-of-the-art background references”
that did not have to be disclosed in their invalidity contentions. Defendants seem to think
that under 35 U.S.C. § 282(c), they can put in whatever they want for “state-of-the-art
background references” so long as they are disclosed in writing 30 days before trial. But § 282
does not trump this court’s orders requiring earlier disclosure of invalidity contentions. As I
ordered on November 21, 2014, in response to defendants’ second request to amend their
invalidity contentions:
At this point in the case, I expect the parties to have staked out
the essential elements of their core substantive contentions,
which include: the claims asserted, the instrumentalities accused,
the prior art relied on for invalidity, and the basis of any other
allegation of invalidity. So, to be clear, from here on,
amendments to pleadings or the core substantive contentions
will be allowed only with the consent of the parties or with leave
of court. Leave to amend core substantive contentions will
require a substantial justification.
Dkt. 95 (emphasis added). My order covered any prior art relied on for invalidity, and I
made no exception for “state-of-the-art background references.”
Defendants asked the court to allow them leave to amend their invalidity contentions,
in part to reduce the number of prior art references they would use. The court will hold them

2

to their word. Plaintiffs’ motion in limine no. 16 is GRANTED.
Entered September 22, 2015.
BY THE COURT:
/s/
________________________________________
JAMES D. PETERSON
District Judge

3