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0912139 B.C. Ltd. v. Rampion USA Inc.

United States District Court, W.D. Washington, Seattle

July 15, 2019

0912139 B.C. LTD, et al., Plaintiffs,
v.
RAMPION USA INC., et al., Defendants.

          ORDER ON PLAINTIFFS' MOTION TO STRIKE DEFENDANTS' INVALIDITY CONTENTIONS

          The Honorable James L. Robart, U.S. District Court Judge.

         I. INTRODUCTION

         Before the court is Plaintiffs 0912139 B.C. Ltd. (“B.C. Ltd.”) and Pakage Apparel, Inc.'s (“Pakage”) (collectively, “Plaintiffs”) motion to strike portions of Rampion USA Inc. and Rampion Enterprises Ltd.'s (collectively, “Defendants”) invalidity contentions. (Mot. (Dkt. # 33).) Defendants oppose the motion. (Resp. (Dkt. # 40).) Plaintiffs filed a reply.[1] (Reply (Dkt. # 43).) The court has reviewed the motion, the parties' submissions concerning the motion, the relevant portions of the record, and the applicable law. Being fully advised, [2] the court GRANTS in part and DENIES in part Plaintiffs' motion to strike Defendants' invalidity contentions.

         II. BACKGROUND

         This is a patent infringement dispute. (See generally Compl. (Dkt. # 1).) B.C. Ltd. owns, and Pakage is licensed to practice, U.S. Patent No. 9, 687, 030 (“the '030 Patent”) and U.S. Patent No. 10, 034, 496 (“the '496 Patent”) (collectively, “the Patents”), which are directed to an undergarment for men. (See Id. ¶¶ 19-24; see also Id. ¶ 19, Ex. 3; id. ¶ 20, Ex. 4.) Plaintiffs allege that Defendants make and sell men's underwear that infringes the Patents. (See Id. ¶¶ 31-64.) Defendants deny infringement and contend that all the asserted claims of both Patents are invalid. (See Rampion USA Answer (Dkt. # 18) ¶¶ 32-61; Rampion Enterprises Answer (Dkt. # 23) ¶¶ 32-61.)

         On January 28, 2019, Defendants served their preliminary invalidity contentions.[3](Meiklejohn Decl. (Dkt. # 27) ¶ 2; see also Park Decl. (Dkt. # 34) ¶ 2, Ex. 1 (“Invalidity Contentions”).) Several weeks later, on March 21, 2019, Plaintiffs filed the present motion to strike portions of Defendants' invalidity contentions for failure to comply with Local Patent Rule 121. (See generally Mot.); Local Rules W.D. Wash. LPR 121.

         III. ANALYSIS

         A. Legal Standard

         The Western District of Washington has adopted local patent rules that “require parties to state early in the litigation and with specificity their contentions with respect to infringement and invalidity.” 02 Micro Int'l Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1359 (Fed. Cir. 2006). These rules are “designed to require parties to crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.” REC Software USA, Inc. v. Bamboo Sols. Corp., No. C11-0554JLR, 2012 WL 3527891, at *2 (W.D. Wash. Aug. 15, 2012) (quoting O2 Micro, 467 F.3d at 1366 n.12). District courts have broad discretion to enforce local patent rules. See, e.g., Howmedica Osteonics Corp. v. Zimmer, Inc., 822 F.3d 1312, 1320 (Fed. Cir. 2016).

         Under Local Patent Rule 121, a party's invalidity contentions must comply with specific requirements. Local Rules W.D. Wash. LPR 121. Three of those requirements are relevant to Plaintiffs' motion. First, the invalidity contentions must identify “[e]ach item of prior art that allegedly anticipates each Asserted Claim or renders it obvious.” Id. LPR 121(b). To that end, “[p]ublic uses or sales shall be identified by specifying the item offered for sale or publicly used or known, the date the offer or use took place or the information became known, and the identity of the person or entity which made the use or which made and received the offer, or the person or entity which made the information known or to whom it was made known.” Id. Second, the invalidity contentions must state “[w]hether each item of prior art anticipates each Asserted Claim or renders it obvious.” Id. LPR 121(c). “If a combination of items of prior art makes a claim obvious, each such combination must be identified.” Id. Finally, the invalidity contentions must include “[a] chart identifying where specifically in each alleged item of prior art each element of each Asserted Claim is found . . . .” Id. LPR 121(d). Similarly, this court's Standing Patent Order requires a party's invalidity contentions to include “a chart that identifies where in each piece of prior art each element of each asserted claim is found.” SPO, https://www.wawd.uscourts.gov/sites/wawd/files/RobartStandingPatentOrder.pdf, at 2.

         As this court has recognized, Local Patent Rule 121 closely tracks the language of a similar local patent rule in the Northern District of California. REC Software, 2012 WL 3527891, at *5 n.4 (citing N.D. Cal. Local Patent Rule 3-3). Accordingly, the court finds persuasive authority from the Northern District of California involving motions to strike invalidity contentions for failure to comply with the local patent rules. See Id. at *2 (“[B]ecause of the strong similarity between the local patent rules of the Northern District of California and the Local Patent Rules of this District, the court views the Northern District of California cases interpreting their own local patent rules to be of assistance in this court's effort to fashion its own standard.”).

         B. Plaintiffs' Motion

         Plaintiffs move to strike Defendants' invalidity contentions on four grounds: (1) Defendants “purport to preserve a right to rely on unidentified references, unidentified portions of references, and unidentified combinations of references”; (2) Defendants identify “four different categories of products” that allegedly constitute prior art but fail to identify the “who, what, and when of the alleged use or sale” of those products, as required under Local Patent Rule 121(b); (3) Defendants' lists of references and claim charts do not identify obviousness combinations with the level of specificity mandated by Local Patent Rule 121(c); and (4) Defendants' claim charts do not identify where each claim element may be found in each alleged item of prior art, in violation of Local Patent Rule 121(d). (Mot. at 1, 4.)

         Defendants insist that the invalidity contentions served on January 28, 2019, satisfy the Local Patent Rules. (Resp. at 1.) Additionally, alongside their response to Plaintiffs' motion, Defendants submitted proposed amended invalidity contentions that purport to address Plaintiffs' complaints and “clarify [Defendants'] already-disclosed positions.” (Id. at 1-2; see also Kolter Decl. (Dkt. # 41) ¶ 14, Ex. 1 (“Prop. Am. Invalidity Contentions”).) Defendants request that, should the court determine that Defendants' invalidity contentions are deficient, Defendants be granted leave to use their amended invalidity contentions or further amend. (Resp. at 4.)

         The court addresses Plaintiffs' challenges in turn.

         1. Reservations of Right

         Plaintiffs move to strike various “reservations of right” throughout Defendants' invalidity contentions. (See Mot. at 7-9.) According to Plaintiffs, those clauses purport to preserve Defendants' right “to rely on unidentified references, unidentified portions of references, and unidentified combinations of references.” (Id. at 7.) Plaintiffs identify approximately 14 paragraphs or portions of paragraphs in which such reservations of right appear. (See Invalidity Contentions at 2-4, 7, 8, 16 (highlighted portions).) According to Plaintiffs, these clauses “are improper because they do not provide the specific information required by LPR 121.” (Mot. at 8.)

         Many of the reservations of right Plaintiffs identify are unproblematic. For instance, Defendants reserve the right to supplement or amend their invalidity contentions to address “newly discovered art, new constructions of the terms of the Patents[], and/or new theories of invalidity.” (Invalidity Contentions at 2.) Similarly, Defendants reserve the right to amend their invalidity contentions should Plaintiffs “modify any assertion or contention in their Infringement Contentions.” (Id. at 3.) As Defendants correctly observe, any such amendment to its invalidity contentions would be governed by Local Patent Rule 124, which requires “a timely showing of good cause.” Local Rules W.D. Wash. LPR 124; (see also Resp. at 5.) Put otherwise, the above-cited clauses do nothing more than acknowledge Defendants' right to move for leave to amend their invalidity contentions at a later date. (Resp. at 5.) Reservations of right to that effect do not contravene Patent Rule 121. See Local Rules W.D. Wash. LPR 124 (good cause to amend may include claim construction and recent discovery of material prior art); see also Medtronic, Inc. v. ...


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