Opinion
Case No.: C 02-04709 JF (PVT)
July 9, 2003
ORDER GRANTING MOTION TO STRIKE PLAINTIFFS' AMENDED INITIAL DISCLOSURE OF ASSERTED CLAIMS AND PRELIMINARY INFRINGEMENT CONTENTIONS
On May 20, 2003, the parties appeared before Chief Magistrate Judge Patricia V. Trumbull (pursuant to the referral of this motion to Judge Trumbull by Judge Fogel) for hearing on Defendant's Motion to Strike Plaintiffs' Amended Initial Disclosure of Asserted Claims and Preliminary Infringement Contentions. Based on the briefs and arguments submitted,
The holding of this court is limited to the facts and the particular circumstances underlying the present motion.
IT IS HEREBY ORDERED that Defendant's motion is GRANTED.
Patent Local Rule 3-1 states that a patentee's initial disclosure shall contain, in relevant part:
"(b) Separately, for each asserted claim, each accused apparatus, product, device, process, method, act or other instrumentality ("Accused Instrumentality") of each opposing party of which the party is aware. This identification shall be as specific as possible. Each product, device, and apparatus must be identified by name or model number, if known. Each method or process must be identified by name, if known, or by any product, device, or apparatus which, when used, allegedly results in the practice of the claimed method or process;
(c) A chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality, including for each element that such party contends is governed by 35 U.S.C. § 112(6), the identity of the structure(s), act(s), or material(s) in the Accused Instrumentality that performs the claimed function;
Plaintiffs' disclosure fails to meet these requirements. The disclosure must address each product (or other accused instrumentality) separately. The disclosure must also identify where each element of each claim is found within each product (or other accused instrumentality).
Plaintiffs' reliance on Hoffman-La Roche, Inc. v. Invamed Inc., 213 F.3d 1359 (Fed. Cir. 2000), is misplaced. In HoffMan-La Roche, the Plaintiff alleged in its complaint that it was not possible to determine whether the Defendant's process infringed the subject patent without first obtaining information from the Defendant. In the present case, Plaintiffs have alleged that one or more of Defendant's products do infringe the claims of seven patents. This allegation was not made on information and belief. The court thus assumes that, unlike the situation in Hoffman-La Roche, Plaintiffs do know how at least one of Defendant's products infringes at least one of the patents.
To the extent Plaintiffs, for whatever reason, do not yet know where an element of a claim is found within a particular product, they should so state in their initial disclosure. The ramifications of any such lack of knowledge, if any, may then be subject to appropriate motion work.
IT IS FURTHER ORDERED that Defendant's motion to phase the Markman hearing is taken under submission pending filing of the parties Joint Claim Construction and Prehearing Statement.
IT IS FURTHER ORDERED that the parties shall meet and confer regarding the schedule in this case. No later than July 15, 2003, the parties shall file a Joint Scheduling Statement, setting forth their joint or respective scheduling proposals starting with a deadline for Plaintiffs to serve their second amended initial disclosures, and proceeding up through the Markman hearing. After reviewing the parties proposals, the court will issue a revised scheduling order.