Sufficiency of each parties' contentions is one of the most common issues in patent cases in Delaware. Both sides tend to want to know exactly what the other side plans to argue—ideally before claim construction. That way the parties can construe the terms that actually matter, and have straightforward dispute about whether the accused product and the prior art meets the claim elements.
Beyond that, both parties typically want the other side to be held to what they disclosed in their contentions. The rules generally prohibit a party from disclosing one thing and then arguing something else later, for no reason (although Third Circuit law can be remarkably soft on this point).
Having a reasonable idea of the potential scope of the case, and of the parties' arguments and their merits, helps both parties in working on settlement.
Because of these dynamics, we get a lot of questions about contentions as Delaware counsel. What is sufficient? What can we do to get more information? The other side's contentions are terrible, can we strike them? Can we force them to supplement? Will the Court hold them to their contentions?
The answers to those questions vary a bit by judge and are often locked behind discovery dispute teleconference transcripts, which are typically never posted to the dockets and are essentially inaccessible for research purposes (unless your firm happened to be involved in the case). So when a new written decision on contentions comes out, we pay attention.
Judge Hall Denies Motion to Strike Bare-Bones Infringement Contentions
This week, Magistrate Judge Hall issued an order denying a motion to strike, finding that a "short but clear explanation" in the infringement contentions was sufficient. It's not clear exactly what was said, and the contentions are redacted in the filings, but here is the Court's description:
Plaintiff identified an indicator and a control circuit in one accused product with specificity and a short but clear explanation. . . . Plaintiff has further represented that its infringement theory is "exactly the same for all" the accused products.
The Court held that this was sufficient:
Although Defendant opted to move to strike the supplemental contentions in their entirety (rather than move to compel Plaintiff to further supplement), the Court has reviewed Plaintiff's contentions and is satisfied that they provide sufficient notice of Plaintiff's legal theories to allow Defendant to fairly prepare a defense against them. . . . Accordingly, Defendant's request to compel Plaintiff to supplement its response to Interrogatory No. 11 is DENIED.
It rejected the challenge in part because the issues the accused infringer presented really went to the merits of the contentions, not their sufficiency:
Defendant does not suggest that Plaintiff raised a new infringement theory too late in the case. Rather, the gist of Defendant's argument is that Plaintiff's infringement theories lack merit. However, contentions are a discovery tool, and a motion to strike contentions is not the appropriate vehicle to assess whether Plaintiff's infringement theories are legally viable. Defendant will have the opportunity to argue that Plaintiff's theories lack merit in a motion for summary judgment and/or at trial.
The Court did, however, remind the parties that the defendant could move again later, to strike later filings that rely on undisclosed theories:
This ruling is without prejudice to Defendant's ability to move to strike any portions of expert reports (or summary judgment briefing) that relies on evidence or legal theories not fairly disclosed.
It will be interesting to see whether the defendant takes the Court up on its offer, and how that plays out for them.
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