Plaintiff Ordered to Produce More Specific Infringement Contentions

The Plaintiff in the case Gebr. Tigges Gmbh & Co. KG v. EYS Metal Sanayi Ltd. (C07-1673) (Lasnik, J.) was ordered to produce more specific infringement contentions in response to the Court's scheduling order calling for "preliminary infringement contentions."

The order states as follows:

The Local Rules for the Western District of Washington do not currently [NOTE: I think the key word from our Chief Judge here is "currently"] define requirements for preliminary infringement contentions. As a guideline, however, many courts, including this Court, look to the Patent Local Rules for the Northern District of California and case law interpreting the rules. See, e.g., McKesson Info. Solutions LLC v. Epic Sys. Corp., 242 F.R.D. 689, 695 n.1 (N.D. Ga. 2007) (stating that decisions of the U.S. District Court for the Northern District of California provide persuasive authority). These rules require PICs to identify “specifically where each element of each asserted claim is found within each Accused Instrumentality” and to declare whether the element “is claimed to be literally present or present under the doctrine of equivalents.” U.S. Dist. Ct. N.D. Cal. Patent LR 3-1(c-d). The courts in the Northern District of California have interpreted this rule as requiring that PICs: reflect “all facts known to [the plaintiff] including those discovered in their Fed. R. Civ. P. 11 pre-filing inquiry,” and contain sufficient detail regarding the plaintiff’s theory of infringement “‘to provide defendants with notice of infringement’ beyond the claim language itself.”

*** (citations omitted)

This Court follows this reasoning because specificity in disclosure responds to the objectives underlying preliminary infringement and invalidity contentions: to streamline discovery and to require both parties “to crystallize their theories of the case early in litigation.” O2 Micro Int’l, Ltd. v. Monolithic Power Sys. Inc., 467 F.3d 1355, 1364-1366 (Fed. Cir. 2006) (upholding under the Federal Rules of Civil Procedure the validity of the Northern District of California’s local patent rules’ requirement that “both the plaintiff and the defendant in patent cases . . . provide early notice of their infringement and invalidity contentions”).

So the take away point from this post is that the WDWA tends to follow practices from the ND of Cal. in terms of local patent practice and in particular, the disclosures and contentions required by the local rules from the ND of Cal., as incorporated into specific cases by judges in this district.
EYSPICorder.pdf
LasnikScheduleOrderPatentCase.pdf

Judge Jones Scheduling Order for Patent Cases

Here is a recent scheduling order issued by our newest judge, Judge Jones, who seems to have been assigned quite a few patent cases by his fellow jurists. In addition to this case, Judge Jones is currently presiding over the Canon USA inc et al. v. Screentone Systems Corporation (o7-1544), a case involving almost every major printer manufacturer, concerning methods and systems of half-toning in computer printers, US Pat. 5,166,809, with related cases pending in Eastern Texas, the District of Delaware, and motions for consolidation and transfer before the Panel for Multi District Litigation (MDL No. 1926, In re Halftone Color Separations).
Judge%20Jones%20Scheduling%20Order.pdf

Judge Pechman Denies Request for Relief from Scheduling Order

Based on my site data, a lot of you are looking for information on how certain judges in the Western District may handle scheduling in a patent case. I've posted here and here on patent scheduling orders used by Judges Zilly and Robart. Here is a post from a case currently pending before Judge Pechman, WizKids Inc. v. Wizards of the Coast (07-809). This case involves US pat. no. 7,201,374 for a "Method and Article of manufacturer for Collectible Game." The patent is owned by Wizards of the Coast, who was sued by Wizkids in a declaratory judgment action alleging non-infringement and invalidity of the '374 patent. Judge Pechman issued a scheduling order setting forth deadlines for (among others) claim construction briefing, preliminary contentions concerning claim construction, and a Markman hearing (attached below, PDF). Declaratory Judgment Plaintiff Wizkids asked for relief from this order, contending that the court did not need to engage in complicated claims construction to hear its motion for summary judgment on the issue of invalidity. Judge Pechman disagreed. From the order denying leave to file an early summary judgment motion:

"Plaintiff claims support or this departure from the case schedule from a recent Supreme Court case which held '[w]here, as here the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate.' KSR Int’l v.Teleflex Inc., ___ U.S. ___, 127 S.Ct. 1727, 1745-46 (2007). Plaintiff wishes to file a motion seeking summary judgment on grounds of obviousness based on prior art. Plaintiff’s argument (and its reliance on KSR) is valid only if the scope of the patent claims and the level of ordinary skill of the art are not in dispute. Plaintiff argues that they are not, but the argument and the evidence are not persuasive. . . . It is apparent from the parties’ pleadings that claim construction will assist in the determination of obviousness. Both the correspondence which they exchanged prior to initiation of the lawsuit and the arguments regarding construction of claim terms in their briefs are evidence that the scope of the claims here is still in dispute. Furthermore, the discovery process has just begun and no depositions (including those of Plaintiff’s game experts who are testifying as to the 'ordinary level of skill' required in this matter) have been taken."
WizKidsOrderLeavetofileearlySJ.pdf
wizkidspechmanschedulingorder.pdf
WizCoastsClaimsContentions.pdf

Scheduling Orders in Patent Cases (WD of Wash.)

Yesterday, a reader asked me whether Judge Zilly has a standing order for patent cases similar to that of Judge Robart. The answer is no, but his scheduling orders in patent cases can be more detailed than other cases and establish deadlines for Markman hearings and briefing on claims construction. Below is a link to a recent scheduling order from a patent case currently pending in Judge Zilly's court.
ZillyMinuteOrderPatentCase.pdf