Patentees in federal court litigation are generally not required to identify every accused product in their complaint. Often, the complaint and early contentions identify an exemplary product or two, and the larger list of related accused products is hashed out during discovery. Simply identifying an exemplary product, however, does not entitle the patentee to demand that the defendant do all the work of identifying - and producing technical discovery on - similar products.
Judges in this District have historically limited patentees' ability to obtain discovery into unaccused products without articulating some basis for believing that those unaccused products infringe, or at least share some relevant characteristic with the products alleged to infringe in the complaint and/or contentions. Judge Burke regularly wades into these waters, applying a multi-factor test that acknowledges the relevant burdens but also leaves room for practical adjustments to those burdens where necessary.
That test was applied recently by Judge Burke in Fundamental Innovation Systems International LLC v. TCT Mobile (US) Inc., C.A. No. 20-552, and his analysis demonstrates some limits on the otherwise broad scope of discovery patentees may obtain.
In FIS, the plaintiff moved to compel the defendants to respond to written discovery with regard to products that were not identified in the plaintiff's complaint or contentions, but are "reasonably similar" to those products. Judge Burke applied the test he set forth in Invensas Corp. v. Renesas Elecs. Corp., 287 F.R.D. 273 (D. Del. 2012).
The first factor (examining the "specificity with which the plaintiff has articulated how the unaccused products are relevant to the existing claims of infringement (and how they are thus 'reasonably similar' to the accused products at issue in those claims)," weighed against permitting discovery. Judge Burke noted that although the plaintiff had been "pretty clear" about identifying which "component, characteristic, or element" rendered it allegedly infringing (USB charging), plaintiff did not provide a basis for the Court to find that those products are "related to [Plaintiff's] existing infringement allegations[,]" or that "'all TCL phones and tablets with USB battery charging capability and USB adapters for providing power to devices via a USB port' can credibly be said to infringe those asserted claims."
There just was not enough to link the unaccused products with the existing infringement allegations:
In light of the fact that there are six patents-in-suit here and many different asserted claims, the Court simply did not come away from the hearing with a good enough handle on how the sought-after discovery fits into Plaintiff's theories of infringement.
The second factor (examining "whether the plaintiff had the ability to identify such products via publicly available information prior to [its] request[,]"), also weighed against discovery. Judge Burke noted that "most, if not all, of the unaccused products at issue are described in and available for sale in the public realm (even if it might take some time to identify all of them)."
Finally, the third factor (examining "the nature of the burden on [the] defendant[] to produce the type of discovery sought[,]"), also weighed against discovery. Defendants argued, with the support of a declaration from their IP Manager, that "(assuming there were a significant number of further unaccused products at issue) it could take over 100 hours (and perhaps hundreds of hours) for Defendants to identify those products, locate relevant discovery and produce that discovery."
Although Judge Burke did not permit unlimited discovery, the defendants apparently "offered to identify and produce discovery at least as to additional variations of specifically identified products," and he ordered that defendants do so promptly.
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