Motion to Strike

A Defendant’s Understanding of Infringement Contentions Is Not Enough To Comply With The Patent Local Rules

Order Granting Motion to Strike, Staying Discovery, and Granting Leave to Amend, GeoVector Corporation v. Samsung Electronics Co. Ltd, Case No. 16-cv02463-WHO (Judge William H. Orrick)

Albert Einstein once noted:  “Any fool can know.  The point is to understand.”  That logic was recently applied in a patent infringement case brought by GeoVector Corporation against Samsung.  GeoVector learned that the Courts of the Northern District will not accept the sufficiency of infringement contentions that the Court itself finds inscrutable and unintelligible merely because the defendant has supposedly “demonstrated an understanding” of the plaintiff’s theories. READ MORE

Build On A Strong Foundation: How Expert Reports Are Constrained By Earlier Disclosures

Order on Motions to Strike Portions of Expert Reports, Finisar Corporation v. Nistica, Inc., Case No. 13-cv-03345-BLF (Judge Beth Freeman)

Expert reports are not written on a blank slate. Instead, parties are generally bound by what they’ve disclosed (or haven’t) earlier in the case. In ruling on Finisar’s and Nistica’s motions to strike portions of each other’s expert reports, Judge Freeman identified several rules of disclosure under the patent local rules and demonstrated their application. READ MORE

Don’t Bury the Lede: Failure to Explicitly List Prior Art Witnesses Can Preclude Them from Testifying

Order Striking Witnesses from Supplemental Initial Disclosures, Finjan, Inc. v. Proofpoint, Inc. et al., Case No. 3:13-cv-05808-HSG (HRL) (Magistrate Judge Howard Lloyd)

How much disclosure is sufficient when you want the author of a prior art reference to testify at trial? Magistrate Judge Lloyd offers one possible answer: invalidity contentions and prior art disclosures alone only identify references that defendants find important, but do not put plaintiff on notice that all the prior art authors and inventors are potential trial witnesses. Therefore, relying on contentions alone may place a defendant at risk that it will not be permitted to call the relevant prior art witnesses. While this order comes with a cautionary tale, will it lead to more meaningful disclosures? READ MORE

CLAIM CONSTRUCTION “GAMESMANSHIP”? Quantum Corporation’s Expert Ordered To Sit For Further Deposition On Claim Construction

Order Re Crossroads’ Motion To Strike, Quantum Corporation v. Crossroads Systems Inc., Case No. C 14-04293 WHA (Judge William Alsup)

Expert witnesses are often used during patent claim construction to offer extrinsic evidence relevant to the meaning of claim terms, such as how one skilled in the art would have understood the terms at the time of the invention. Yet, experts must be careful to avoid offering opinions on the ultimate meaning of claim terms, which is a question of law. This is a subtle balance that can be tricky to carry out in practice. As Judge Alsup’s recent opinion makes clear, an expert must be careful not to cross the line into “gamesmanship” territory when parsing “fact” opinions versus ultimate opinions on claim constructions. READ MORE

Court Strikes Expert Opinions, No Punishment Intended

Order Granting Takeda’s Motion to Strike, Takeda Pharmaceutical Co. LTD., et al., v. TWi Pharmaceuticals, Inc., Case No. 13-cv-02420-LHK (Judge Lucy H. Koh)

The Northern District Patent Local Rules are specifically designed to narrow the scope of complex litigation early in the case; they are not designed to “punish” a party. More than a year after serving its initial invalidity contentions and after moving to amend its contentions twice, TWi attempted to backdoor additional invalidity theories through its expert reports. Unsurprisingly, Takeda filed a motion to strike. Judge Koh granted the motion, rejecting TWi’s argument that it was being “punished” for complying with case narrowing orders. READ MORE

There’s No “Malice” in this Ruling, Alec — Corporations Cannot Be Malicious, At Least Under California Law

Order Granting Partial Motion to Dismiss and Motion to Strike, Taiwan Semiconductor Mfg. Co., LTD., v. Tela Innovations, Inc., Case No. 14-cv-00362-BLF (Judge Beth Labson Freeman)

In an appearance earlier this week in San Francisco, while commenting upon the recent Supreme Court Hobby Lobby decision and other developments in the law, the actor Alec Baldwin told a crowd at a sold-out Nourse Theater that he felt corporations in the United States have all the rights of individuals, but not all of their associated responsibilities. READ MORE

Window Wars: Magistrate Ryu Strikes Untimely Intervener Invalidity Contentions

Motion to Stay Strike Invalidity Contentions Granted, Sage Electrochromics Inc. v. View Inc., Case No. C 12-06441 (Magistrate Judge Donna Ryu)

Move over, smartphone wars.  The “window wars” are raging right here in the Northern District of California, and a new order from Magistrate Judge Ryu provides a glimpse into the action.  The order is also a useful lesson for intervening parties:  when interveners miss their infringement or invalidity contentions deadlines, they should not expect any special treatment.

Both Plaintiff Sage Electrochromics, Inc. and Defendant View, Inc. sell electrochromic glass, sometimes called “smart glass” or “dynamic glass,” that can switch between clear and tinted states.  The technology could potentially save building owners a lot of money on their utility bills.  Both Sage and View have asserted patents against each other. READ MORE

Watch Those Patent Local Rules: They Can Cause Your Expert Opinions To Be Stricken

ASUS Computer Int’l v. Round Rock Research, LLC, 12-cv-02099 (Magistrate Judge Nathanael Cousins)

On Tuesday, Magistrate Judge Cousins struck portions of both DJ plaintiff / patent defendant ASUS, and DJ defendant / patent plaintiff Round Rock’s respective expert reports for containing infringement theories, accused products, and pieces of prior art that were not disclosed in the parties’ respective invalidity and infringement contentions.  Magistrate Judge Cousins’ ruling reflects the importance of accurate and up-to-date patent local rule contentions in the patent litigation in the Northern District.  Magistrate Judge Cousins also struck portions of each side’s reports that relied upon documents that were not produced during fact discovery, a ruling that was again in the theme of full disclosure. READ MORE