This happened earlier this month, but I wanted to post about it since this is a recurring issue.
In Rex Computing, Inc. v. Cerebras Systems Inc., C.A. No. 21-525-MN (D. Del. July 8, 2022), defendant filed a discovery dispute to compel plaintiff to supplement its infringement contentions to explain how the cited source code meets those limitations.
Plaintiff responded, in part, by noting that these are "initial contentions while discovery is ongoing." D.I. 94 at 1.
Nonetheless, the Court ordered plaintiff to supplement its contentions to explain how the code meets the limitations:
ORAL ORDER . . . Plaintiff shall supplement its infringement contentions on or before July 18, 2022. Citations to source code in Plaintiff's supplementation shall include descriptions of how the cited source code satisfies the corresponding claim limitation. See Acceleration Bay LLC v. Activision Blizzard, Inc., C.A. No. 16-453-RGA, D.I. 155 at 6 (D. Del. May 19, 2017) (quoting Droplets v. Amazon.com, 2013 WL 1563256, at *3-5 (N.D. Cal. Apr. 12, 2013)).
Plaintiff's infringement contentions were not insubstantial (see attachment below), but they also included no written explanation about why the cited material met the claim element. That is not unusual on either side (infringement or invalidity), but this order shows that it is not always sufficient.
Perhaps more importantly, it shows that "we'll supplement in our final contentions" is not the end-all be-all answer. Defendant here actually cited a great quote from the Court on that point, which I hadn't seen before, but I wanted to flag because it may be useful in other cases:
ORAL ORDER: . . . (1) During the October 8, 2021 teleconference, Plaintiff represented that it would supplement its contentions to include source code citations at this stage of the case (D.I. 63 at 10:3-5); to allow Plaintiff to stockpile supporting evidence, including source code, only to load it into final contentions on or near the deadline could create inefficiencies such as a need to reopen discovery to address new infringement theories. See Finjan, Inc. v. Rapid7, Inc., C.A. No. 18-1519-MN, 2020 WL 5798545, at *4, 6 (D. Del. Sept. 29, 2020)
So remember to come back and search the blog next time you have a dispute with the other side and they say "we'll supplement in our final contentions." Sometimes that is not quick enough!
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