The Software IP Report
Inadequate Infringement Contentions Are Struck
By Charles Bieneman
08/28/2013
Categories: Miscellaneous, Patent Civil Procedure, Software Patents, The Software IP Report
Because of insufficiencies in a plaintiff’s infringement contentions, a plaintiff was precluded from asserting the doctrine of equivalents (DOE) concerning any claim, and was also precluded from asserting any infringement with respect to one means-plus-function claim. Dynetix Design Solutions v. Synopsys, Inc., No. C 11-5973 PSG (N.D. Cal. Aug. 22, 2013).
Regarding the doctrine of equivalents, the plaintiff’s infringement contentions stated merely that the defendant “‘practices this element literally or equivalently’ before going on to explain a single way in which [the defendant] infringes.'” There was no “specific analysis” as to how the doctrine of equivalents applied. At a minimum, although no “magic words” were required, a plaintiff was required explain how the “function, way, result” requirements of the Doctrine of Equivalents were met. By failing to provide “adequate notice of these theories during fact discovery, [the plaintiff] severely prejudiced [the defendant’s] ability to refute any DOE theories.”
The court also ordered that certain of the plaintiff’s infringement theories be struck because they were not in the plaintiff’s infringement contentions, but surfaced only in a later expert report. The infringement contentions explicitly accused certain instrumentalities, but made no mention of the systems only mentioned in the expert report. These new theories could not be added to the case at a late stage.
Further, the court struck infringement contentions related to a means-plus-function claim. The plaintiff had “never asked the court to construe at least three means-plus function terms . . . during either of the court’s claim construction hearings, but now on the eve of trial requests that the court do so.” Although the court was obligated to construe claim terms in dispute, “the court is not at the whims of the party as to when it has to do so.” Here, the plaintiff had “failed to diligently develop its case,” and therefore the claim at issue would be dismissed.