As we’ve said before, sufficiency of each parties’ contentions can vary a bit by judge, and holdings are difficult to research because they usually appear in discovery dispute teleconference transcripts that are not posted to the dockets.
However, we saw a written decision issued by Judge Burke last week that illuminated one of the Court’s potential approaches to a dispute over invalidity contentions. The Court proposed that, if Plaintiff would agree to narrow its claims, the Court would require defendants to reduce the number of combinations. When Plaintiffs refused, they still received relief, but it wasn’t as strong or as specific as the relief they might have gotten had they adopted the Court’s proposal.
Plaintiffs complained that Defendants’ response to a contention interrogatory was unduly vague and insufficiently fulsome. The interrogatory sought invalidity contentions under § 103 obviousness, and the response incorporated Defendants’ Joint Initial Invalidity Contentions, so the Court focused on the Initial Invalidity Contention document itself for its analysis.
The Court found that the Initial Invalidity Contentions were sufficient in most respects:
In general, they provide real detail, including significant specificity as to: (a) the prior art references that could be a part of invalidity contentions, (see, e.g., Initial Invalidity Contentions at 54-114); (b) the portions of the prior art references that are relevant to Defendants’ obviousness arguments, (see, e.g., id. at Appendix A); and (c) why a person of ordinary skill in the art might be motivated to combine the teachings of certain prior art references, (see id. at 128-31, 136-47).
However, the Court identified “one area as to which [it] has sympathy”:
Defendants generally state that the asserted claims are obvious over many possible combinations of many different references, (see, e.g., id. at 132), which makes it difficult for Plaintiffs to know exactly which specific combinations are being asserted against them. On that score, Plaintiffs should get some relief.
What kind of relief?
The Court “repeatedly suggested that if Plaintiffs were willing to narrow the number of asserted claims, then the Court could require Defendants to then cut down to a specific number of invalidity combinations by a date certain.”
When Plaintiffs rejected that option, the Court chose a broader requirement, holding the Defendants must identity those specific invalidity combinations they intend to rely upon (without the use of terms like “exemplary” and “and/or”), but the Court did not limit the Defendants to a specific number of invalidity combinations.
In addition, the Court directed the Defendants to provide “fulsome detail regarding the obviousness arguments for those specific invalidity combinations” and supplement their response to the interrogatory at the center of this discovery dispute.
However, instead of applying an early “date certain” deadline as initially proposed, the Court ordered that these adjustments should be implemented by the date when Defendants’ final invalidity contentions are due on the scheduling order.
Defendants must amend their invalidity contentions at the final deadline regardless, so while the order undergirds Defendants’ obligation to supplement, Plaintiff likely did not receive much relief beyond what was already guaranteed to them under the scheduling order.
Takeaways
First, this opinion underscores that compromise may increase the odds of getting specific and early relief, reminiscent of the guidance on Judge Burke's form scheduling order with respect to interrogatories that "adequacy of all interrogatory answers shall, in part, be judged by the level of detail each party provides; i.e., the more detail a party provides, the more detail a party shall receive."
Second, it is worth noting that the Court proposed claim narrowing in exchange for contention relief. We know that when claim narrowing is ordered early, the Court often orders a two-phase narrowing process that sometimes coincides with initial contentions and final contentions. Though the docket does not indicate any claim narrowing orders in this case, it is interesting that Judge Burke packaged a proposed solution that included compromise in both claim narrowing and contentions.
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