I admit, sometimes I write about things because I want to be able to find them next time I need them. This is one of those posts.
As we've discussed before, most patent cases involve an interrogatory to the patentee asking for the date of conception. Patentees often give a low-effort initial response along the lines of "no later than x," where x is the date of filing or some other easy-to-identify date. Then they wait to see whether they need an earlier date, and supplement if so.
This has two benefits for the patentee: (1) it makes it hard for the accused infringer to weigh the relative merits of the prior art, because it has to hit a moving target, and (2) it's super easy, because the patentee doesn't have to review any of the materials. Thus, it's a common response.
The Court has rejected this response in the past, including the idea that "[a patentee] has no obligation to investigate whether the patent-in-suit is entitled to an earlier priority date at least until Defendant has provided its invalidity contentions." The Court in that transcript forced the patentee to actually respond to the interrogatory—making it a handy transcript for accused infringers.
But as of today we have an oral order on this point, which is even better! This morning in Inpria Corporation v. Lam Research Corp., C.A. No. 22-1359-CJB (D. Del.), the Court issued an oral order addressing exactly this issue:
ORAL ORDER: The Court, having reviewed Defendant’s pending discovery dispute motion . . . hereby ORDERS as follows: . . . (2) With regard to the dispute as to Defendant’s ROG No. 3 [regarding conception and reduction to practice], Defendant’s request is also GRANTED . . . . Plaintiff must supplement its answer to that ROG by no later than 30 days from today’s date, identifying (as was requested by the ROG): (a) a date certain as to conception and reduction to practice regarding the subject matter of each asserted patent (and not by listing a date, preceded by the words “no later than”) . . . ; and (b) some narrative explanation of the facts and circumstances that relate to the conception and reduction to practice of the inventions . . . . The information is relevant to the case for the reasons Defendant says, it is the type of information that Plaintiff should have long known would be required to be produced, and it is information that, to a significant degree, is in Plaintiff’s hands.; . . . Ordered by Judge Christopher J. Burke on 8/5/2024. (smg) (Entered: 08/05/2024)
Inpria Corporation v. Lam Research Corp., C.A. No. 22-1359-CJB, D.I. 145 (D. Del. Aug. 5, 2024) (emphasis added). Enjoy!
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