Wednesday, August 29, 2012

CAFC discusses the interplay of 35 USC 282 and FRCP 26(e)

In Woods and MEC v. DEANGELO , the Court of Appeals for the Federal Circuit [CAFC] discusses the consequences of violation of FRCP 26(e). Oral argument at available at 2010-1478/all/woods.html. Certain relevant prior art documents were conveyed by email within the time limit of 35 USC 282, but were not explained in compliance with FRCP 26(e). The CAFC affirmed their exclusion.

Within the case:

Recognizing the evolving nature of the contentions of the parties leading up to trial and to protect patentees from unfair and prejudicial surprise at trial, Congress established 35 U.S.C. § 282 to provide a statutory outer limit for the disclosure of certain information relating specifically to defenses to be relied upon by an accused infringer at trial. Section 282 requires notice in writing:

at least thirty days before the trial, of . . . any publication to be relied upon . . . as showing the state of the art, and the name and address of any per- son who may be relied upon as the prior inventor or as having prior knowledge of or as having pre- viously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires.

Section 282 does not eliminate a defendant’s obligations under the Federal Rules of Civil Procedure. To the contrary, the statute and the rules are intended to coexist. See ATD Corp. v. Lydall, Inc., 159 F.3d 534, 551 (Fed. Cir. 1998) (“The purpose of § 282, like that of the Federal Rules, is to prevent unfair and prejudicial surprise, not to facilitate last-minute production of evidence.”); see also Thermo King Corp. v. White’s Trucking Serv., Inc., 292 F.2d 668, 674 (5th Cir. 1961).

An issue:

MES specifically argues that “[w]hile DeAngelo provided the documents to MES’s attorney on February 8, 2010, DeAngelo did not clearly state the purpose of the documents or how they might be used.” Appellee’s Br. 20. MES thus argues that the February 8 e-mail “did not serve to supplement the mandatory Rule 26 disclosures or the interrogatory re- sponses.” Id. at 22 (emphasis added). Woods also specifi- cally raised the issue at oral argument, stating “there was no Rule 26(e) disclosure—the providing of the documents without answering the questions that we actually asked and without giving us the information that we actually needed is not a satisfactory Rule 26(e) disclosure.” See Oral Arg. at 20:48-21:04. Thus, the “issue” here— whether DeAngelo’s e-mail of February 8 constituted an adequate and timely supplement to its interrogatory response—includes consideration of both the timeliness of the response and the propriety of the supplementation of the interrogatory itself.


The district court, by local rule1 or by court order,2 may require such production at an earlier date. But the problem here is that there was no such local rule or court order, save the order setting a discovery deadline of February 9, 2010. The documents were dis- closed on February 8, before the discovery deadline and before the thirty day outer limit set by § 282. Furthermore, Rule 26(e) requires only that parties supplement prior discovery responses “in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect . . . .” Fed. R. Civ. P. 26(e)(1)(A) (emphasis added).

The CAFC agrees with the district court:

This court agrees with the district court that Rule 26(e) was violated and concludes that the district court imposed an appropriate sanction. The interrogatory in question did more than require the identification of documents (a requirement that DeAngelo satisfied by the production). It requested that DeAngelo “[s]tate with specificity all prior art that anticipates such claims of one or more of the patents at issue or renders them obvious. In doing so, specify the particular claim being referred to and identify why such prior art anticipates such claims or renders them obvious.” Mot. to Strike Drawings at 1-2 (emphasis added). While DeAngelo’s e-mail of February 8, 2010 (in which it disclosed the drawings) stated that the drawings “may anticipate the Woods inventions, or may be relied upon as showing the state of the art in the early 1990’s,” DeAngelo did not comply with the emphasized requirements before the discovery deadline. Such compliance was important.

As to claim construction:

Claim terms are given their ordinary and customary meaning—the meaning that they would have to a person of ordinary skill in the art in light of the specification and prosecution history at the time of the invention. Id. at 1312-13. The specification need not describe every em- bodiment of the claimed invention, see Netword, LLC v. Centraal Corp., 242 F.3d 1347, 1352 (Fed. Cir. 2001), and the claims should not be confined to the disclosed em- bodiments—even when the specification discloses only one embodiment, Phillips, 415 F.3d at 1323.

As to a later application, with broader claims:

DeAngelo’s characterization of Woods’s abandonment of the ’097 Application as an admission that the Shiozawa and Moffit references disclose every element of Woods’s patents is meritless. DeAngelo fails to consider that Woods filed the ’548 Application more than six months before the examiner rejected the ’097 Application. Moreover, the claims in the ’548 Application are arguably broader than the claims in the ’097 Application, and Woods prosecuted the ’548 Application before the same examiner who eventually rejected the ’097 Application. There is nothing to suggest that Woods did anything other than simply choose to pursue the similar, but broader, ’548 Application instead of continuing to prosecute the ’097 Application. This court declines to characterize Woods’s conduct as an admission or concession that the claims in the ’097 Application are anticipated by Shiozawa or Moffitt.

On an acquiescence argument:

In TorPharm, Inc. v. Ranbaxy Pharmaceuticals, Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003), this court rejected Ranbaxy’s similar acquiescence rationale, explaining that “Ranbaxy’s argument blurs the distinction between claims and limitations: patentability is assessed for the former, not the latter.” Explicit limitations are material to the infringement inquiry. Id. at 1331 n.9. But viewing an amendment as an admission that the initial claim was unpatentable requires more than the mere presence of a limitation. See id. at 1330.


A patent applicant is not presumed to have conceded the presence in the prior art of every claim limitation he had no reason to dispute.

As to Rule 11:

The Eleventh Circuit imposes Rule 11 sanctions where the “frivolous nature of the claims-at-issue is unequivocal.” Carter v. ALK Holdings, Inc., 605 F.3d 1319, 1323 (Fed. Cir. 2010). In a patent case, this court stated that “an attorney violates Rule 11(b)(3) when an objectively reasonable attorney would not believe, based on some actual evidence uncovered during the prefiling investigation, that each claim limitation reads on the accused device . . . .” Antonious v. Spalding & Evenflo Cos., 275 F.3d 1066, 1074 (Fed. Cir. 2002).

Here, the record is replete with evidence supporting the district court’s conclusion that MES conducted a sufficient pre-filing investigation including photographing and studying photographs of DeAngelo’s accused prod- ucts. See supra § I.B. Nonetheless, DeAngelo argues that Judin v. United States, 110 F.3d 780 (Fed. Cir. 1997), compels the conclusion that MES’s mere observations of DeAngelo products cannot constitute an adequate investi- gation. DeAngelo’s reliance on Judin is misplaced. In Judin, the plaintiff observed allegedly infringing products from a distance, but never sought access to investigate them more closely. Id. at 784. Here, MES directly re- quested from DeAngelo, in writing, information about DeAngelo’s allegedly infringing devices. When that information was not forthcoming, MES took the photo- graphs of DeAngelo’s products that were used as the basis for filing suit. At trial a number of witnesses testified that they could discern the features covered by the as- serted claims from the digital color photographs. This is not a case like Judin where the plaintiff sued without seeking access to examine allegedly infringing devices. The district court did not abuse its discretion in declining to sanction MES.


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