One of the more common District of Delaware questions you get as local counsel is "can we move to strike opposing counsel's (infringement or invalidity) contentions?"
That may seem like a simple question, but the answer depends many things, like: What is wrong with those contentions? How were our contentions in comparison? Which judge is this in front of? How long ago did they serve them? (And, sometimes, things like: Why are you asking this now, when we are two weeks from trial?)
Challenging contention disclosures can be tough even if you have what seem like fairly good arguments. The Court is generally not eager to preclude parties from making their case, and the precedent on this issue tends to be obscure, unclear, and fact-dependent.
Worse, even if you find precedent on an issue, it's often in the form of a transcript or oral order that refers to the contentions—but those contentions are very frequently sealed and inaccessible.
That's why it catches my eye whenever the Court releases a decision on the adequacy of contentions, even if there is not a ton of meat to it (there often isn't, because these are such fact- and context-dependent issues).
Earlier this month, in TwinStrand Biosciences, Inc. v. Guardant Health, Inc., C.A. No. 21-1126-GBW-SRF (D. Del.), Judge Fallon issued just such a ruling, finding that a plaintiff's infringement contentions were not inadequate:
ORAL ORDER re 127 Letter, 126 Letter: Having reviewed the letter briefing on the parties' discovery disputes . . . , IT IS ORDERED that: . . . (2) Defendant's motion to strike Plaintiffs' infringement contentions regarding [certain accused] services is DENIED. "Striking a patentees infringement contentions is a severe sanction that should be used sparingly and only for good cause." . . . Defendant's challenge to the merits of Plaintiffs' infringement contentions does not constitute good cause because "a motion to strike contentions is not the appropriate vehicle to assess whether... infringement theories are legally viable." . . . Plaintiffs' infringement contentions are preliminary, not final; Plaintiffs' claim charts are timely; and the claim charts sufficiently provide notice of Plaintiffs' infringement contentions regarding the [accused] services at this stage.
TwinStrand Biosciences, Inc. v. Guardant Health, Inc., C.A. No. 21-1126-GBW-SRF (D. Del. Oct. 18, 2022).
In the process, the Court distinguished a number of prior cases—remember to come back to this post if you need a nice list list of authority for a similar dispute:
For these reasons, the authority cited by Defendant is distinguishable. Cf. Personal Audio, LLC v. Google LLC, C.A. No. 17-1751-CFC-CJB, D.I. 290 at 2 (D. Del. Nov. 15, 2018) (compelling supplementation of final contentions where certain devices accused of infringement were not charted); Round Rock Research LLC v. Lenovo Group Ltd., C.A. No. 11-1011-RGA, D.I. 86 (D. Del. June 14, 2013) (limiting the accused products to those included in infringement contentions and claim charts); Walker Digital, LLC v. Google Inc., C.A. No. 11-309-SLR, 2013 WL 2949109, at *2 (D. Del. June 14, 2013) (striking infringement contentions that were not timely disclosed); EON Corp. IP Holdings LLC v. FLO TV Inc., C.A. No. 10-812-RGA, 2013 WL 5883759, at *1 (D. Del. Oct. 30, 2013) (excluding infringement contentions on products that were not charted); Uniloc 2017 LLC v. Apple, Inc., 2019 WL 8810168 (N.D. Cal. Dec. 16, 2019) (permitting amendment of contentions stricken pursuant to N.D. Cal. patent local rules)[.]
After determining that the defendant's objections went to the merits, rather than the adequacy, of the plaintiff's contentions, the Court easily held that the defendant could not withhold discovery due to the alleged inadequacy of the contentions, and granted a motion to compel that discovery:
(3) Plaintiffs' motion to compel Defendant to produce core technical documents, sales figures, and documents responsive to RFP Nos. 1-4, 6-8, 14, 29, and 33 for the [relevant] services is GRANTED, and production is due on or before November 18, 2022. Defendant's substantive challenge to the merits of Plaintiffs' infringement contentions does not provide a reasonable basis to withhold discovery. See Greatbatch Ltd. v. AVX Corp., 179 F. Supp. 3d 370, 374 (D. Del. 2016) (rejecting the argument that the substantive weakness of the infringement contentions should negate the obligation to produce core technical documents); see also Contour IP Holding, LLC v. GoPro, Inc., C.A. No. 15-1108-LPS, D.I. 65 (D. Del. July 6, 2016) (granting request to compel core technical document production as required by the scheduling order).
That's exactly the outcome I'd expect. It's worth noting that the defendant didn't pay much of a price here—they essentially achieved a self-imposed stay from the time of contentions up through a month after the Court's grant of the to compel (which is not the Court's fault; plaintiff didn't ask for any relief on that front, such as sanctions).
Looking at the discovery dispute letters, defendants' allegations are fairly short and, as usual, the most relevant portion is redacted:
Plaintiffs’ conclusory contentions against the Connect and Inform services should be stricken. . . . Plaintiffs have never provided a claim chart or other indication of how the [relevant] services perform the claimed sequencing methods . . . . Instead, plaintiffs include just a single passing reference to [each service] in each claim chart stating that “In providing Guardant [Connect/Inform] services, Guardant uses the same sequencing methods that it performs in at least one of the Accused Products.” . . . But the documents cited by plaintiffs for this assertion do not show that the Guardant services use any “sequencing methods”; on the contrary, they show that Inform and Connect depend on existing sequencing data to provide analytic and referral services: [redacted]. . . . Thus, Guardant Inform and Guardant Connect should be stricken from plaintiffs’ contentions.
What we can see, though, teaches a pretty clear lesson. If you have to get to the point of "sure, their contentions say why we infringe, but if you look at the documents they cited . . . ," you're probably going to have a hard time convincing the Court that your motion to strike is not just a stealth summary judgment motion.
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