United States District Court, E.D. Virginia, Norfolk Division
MEMORANDUM OPINION AND ORDER
LAWRENCE R. LEONARD, Magistrate Judge.
This matter is before the Court on Plaintiff Intelligent Verification Systems, LLC's ("IVS") Motion to Strike Portions of the Expert Report of Dr. Vijayakumar Bhagavatula (the "Bhagavatula Report"), to Preclude Defendants From Relying on Certain Alleged Prior Art References, and to Limit the Number of Invalidity Arguments and References. ECF No. 237 (the "Motion"). Defendants Microsoft Corp. and Majesco Entertainment Co. (collectively, the "Defendants") jointly opposed, ECF No. 246, and IVS replied, ECF No. 250. As IVS neither requested this Motion be set for hearing nor heard on the pleadings in accordance with Eastern District of Virginia Local Civil Rule 7(E), the Court dispenses with oral argument and adjudicates this Motion on the pleadings alone. IVS's requests in this Motion are two-fold: first, IVS "move[d] the Court to strike all portions of the Bhagavatula Report that rely on alleged prior art references for invalidity that were not fully disclosed or the subject of a claim chart in Defendants' responses to IVS Interrogatory No. 6;" and second, IVS "move[d] this Court to order Defendants to narrow their invalidity arguments." ECF No. 238 at 2. The Court will consider each of these arguments in turn.
I. Prior Art References Not Included in Claim Charts
IVS's attack on the Bhagavatula Report is based entirely on the contention that the "Defendants' fail[ed] to provide adequate information during fact discovery." Id. at 8 n.2. Although IVS made general allegations that the Defendants did "not fully disclose" the prior art relied upon in the Bhagavatula Report, the crux of IVS's argument is that the Defendants failed to identify these prior art references in claim charts during fact discovery. Id. at 1, 12-16. Indeed, IVS claimed that "numerous different federal district courts" have barred "first-time identifications of specific reference combinations to advance obviousness theories" when parties "failed to include [those references] in their invalidity charts. " Id. at 12, 14 (emphasis added). In total, IVS requested that the Court strike nineteen prior art references from the Bhagavatula Report that were not produced in claim charts and preclude any further reliance on them by the Defendants forthwith. Id. at 14-16. IVS argued that to allow the Defendants to rely on these prior art references would prejudice IVS. Id. at 14. As an example of prejudice, IVS claimed that after Defendant Microsoft Corp. cancelled the deposition of Dr. Alex Pentland, an author of prior art publications disclosed by the Defendants, and did not include prior art publications authored by Dr. Pentland in its claim charts, IVS believed that the "Defendants would not be substantively relying on the new alleged references by Dr. Pentland in their invalidity case." Id.
In response, the Defendants claimed that Interrogatory No. 6 requested only the factual bases for each of the Defendants' defenses, and thus, the Defendants' summary disclosure of prior art references, albeit not organized in claim chart fashion, was sufficient. ECF No. 246 at 2-5. The Defendants highlighted the fact that IVS never requested claim charts: "if Plaintiff wanted invalidity claim charts, it simply had to ask for claim charts, as Defendants did in seeking Plaintiff's infringement contentions. Rather, Plaintiff opted to ask only for facts...." Id. at 10-11. Additionally, Microsoft stated that after it informed IVS that Dr. Pentland's deposition was cancelled, Microsoft identified additional publications authored by Dr. Pentland in its responsive discovery disclosures. Id. at 12. This action, the Defendants argued, should have conveyed to IVS that the Defendants intended to rely on Dr. Pentland's prior art, regardless of the fact that his deposition was cancelled and his prior art publications were not included in claim charts. Id.
A. The Defendants Were Not Required by Order or Local Rules to Provide Claim Charts
As a preliminary matter, it appears that IVS does not dispute that each of the prior art references identified in its Motion were, in fact, disclosed during fact discovery, and rightly so. IVS's contention is entirely based on the form of the Defendants' disclosure of those prior art references; specifically, that they were summarily disclosed in response to Interrogatory No. 6, as opposed to being organized in claim charts. IVS cited numerous cases for the proposition that expert reports may not "include first-time identifications of specific reference combinations to advance obviousness theories." ECF No. 238 at 12 (citing cases). However, the cases cited by IVS in support of the proposition that the Defendants should be barred from relying on any prior art references not included in their claim charts are unpersuasive. In some, the parties were required to file claim charts either by local patent rules, see e.g., Verinata Health, Inc. v. Sequenom, Inc., No. 12-00865, 2014 U.S. Dist. LEXIS 116382, at *3, 7 (N.D. Cal. Aug. 20, 2014); Merck Sharpe & Dohme Corp. v. Sandoz, Inc., No. 12-3289, 2014 U.S. Dist. LEXIS 52548, *3-5 (D.N.J. April 16, 2014); Asus Computer Intl v. Round Rock Research, LLC, No. 12cv-02099, 2014 U.S. Dist. LEXIS 50728, at *5 (N.D. Cal. Apr. 11, 2014); Mediatek Inc. v. Freescale Semiconductor, Inc., No. 11-cv-5341, 2014 U.S. Dist. LEXIS 22442, at *2-3 (N.D. Cal. Feb. 21, 2014), or court order, see, e.g., ePlus, Inc. v. Lawson Software, Inc., No. 3:09cv620, 2010 WL 3219318, at *1-2 (E.D. Va. Aug. 13, 2010) (relying on a scheduling order which required the defendant to file a statement of invalidity defenses); Anascape, Ltd v. Microsoft Corp., No. 9:06-CV-158, 2008 U.S. Dist. LEXIS 111917, *4-5 (E.D. Texas May 1, 2008) (same), neither of which occurred in the present case. Moreover, some cases barred prior art when they were disclosed after discovery was completed, not based on the form of the disclosure during discovery. See, e.g., Praxair, Inc. v. ATMI, Inc., 231 F.R.D. 457, 464 (D. Del. 2005) (barring references to prior art disclosed during an extension of fact discovery, which had been permitted only "to bring closure to open discovery issues, not to open new discovery issues"), rev'd on other grounds, 543 F.3d 1306 (Fed. Cir. 2008); Takeda Chem. Indus., Ltd. v. MyIan Labs., Inc., No. 03 Civ. 8253, 2005 WL 1812996, at *1 (S.D.N.Y. Aug. 3, 2005) (barring invalidity contentions and prior art references that had not been disclosed in fact discovery).
IVS also argued that the Defendants'"minimal response is [sic] not providing a full and complete answer" to Interrogatory No. 6 "falls short of the type of information required under the Supreme Court's decision in KSR Int['l] Co. v. Teleflex Inc." ECF No. 250 at 5. However, IVS's reliance on KSR Intl Co. v. Teleflex, Inc. for this proposition is misplaced. IVS interpreted KSR Int'l Co. to apply to discovery disclosures, when, in fact, the statement cited by IVS applies to a court's analytical review of the parties' proffer. Indeed, the Supreme Court's holding that "this analysis should be made explicit, " refers to what is "necessary for a court to look to... in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue, " and is explicitly premised on the need to "facilitate review" of the court's decision. KSR Intl Co., 550 U.S. at 418. To equate the level of disclosure required in discovery with the standard's undergirding a court's review of patent claims misstates KSR Intl Co. Accordingly, none of the cases relied upon by IVS are persuasive for their proffered purpose, and IVS has failed to identify any controlling legal authority which would have compelled the Defendants to disclose the prior art references in claim chart form in response to Interrogatory No. 6.
Moreover, if IVS had required claim charts, IVS should have asked for those claim charts in discovery. IVS cannot now complain of an error attributable to its own drafting of interrogatory requests. IVS claimed that "Microsoft's argument that if Plaintiff wanted invalidity charts, it simply had to ask for claim charts, ' would mean that whenever parties in the future have discovery disputes, the disputes cannot be resolved by counsel's letter reflecting the resolution inasmuch as the letter cannot be relied upon at a later date." ECF No. 250 at 5. The correspondence between the parties, however, reflects no such "resolution." Rather, after IVS wrote Microsoft in December 2013 that "[b]ased on Microsoft's supplemental responses and claim chart exhibits, IVS's understanding is that Microsoft will only rely on those references included in its 29 claim charts, " ECF No. 238, attach. 18, Microsoft responded that "[a]s drafted, and certainly together with the claim charts that we served as Exhibits, Microsoft's response identifies for you in more than sufficient detail the prior art upon which Microsoft is presently relying, " id, attach. 20 (emphasis added). Clearly, Microsoft did not agree with IVS's construction of the defense's reliance on prior art because Microsoft referenced the entirety of its response to Interrogatory No. 6 after receiving IVS's letter. IVS's attempt to unilaterally limit the Defendants to only those prior art references identified in the claim charts approximately eight months before the close of fact discovery can hardly be considered binding on the Defendants, especially considering that the Defendants made four supplemental responses thereafter. See ECF No. 246 at 3-4.
Finally, IVS's only argument, beyond conclusory allegations, as to any prejudice it experienced involved the Defendants' cancellation of Dr. Pentland's deposition. ECF No. 238 at 14. IVS argued that because the Defendants did not provide claim charts for Dr. Pentland's prior art publications and the Defendants canceled Dr. Pentland's deposition, IVS believed the Defendants would not rely on Dr. Pentland's prior art. This argument fails, however, as after the Defendants canceled Dr. Pentland's deposition, the Defendants continued to disclose and identify prior art publications authored by Dr. Pentland. ECF No. 246 at 12. It would be perplexing indeed to hold the Defendants accountable for IVS's one-sided interpretation of singular incidents in discovery which disregard the Defendants' disclosure thereafter, or in the case of counsels' correspondence outlined above, the Defendants' explicit communication.
B. No Mutual Understanding Regarding Interrogatory No. 6
IVS also argued that, regardless of the plain language of the Interrogatory, the Defendants understood Interrogatory No. 6 to require more than just a list of prior art references, and accordingly, should be barred from relying on any prior art references not included in the claim charts. IVS presented two arguments to prove that the Defendants understood that Interrogatory No. 6 required more than simply a list patents and publications. First, IVS again relied on its December 2013 letter which stated that "[biased on Microsoft's supplemental responses and claim chart exhibits, IVS's understanding is that Microsoft will rely on those references included in its 29 claim charts." ECF No. 238, attach. 18. IVS claimed that the Defendants "ignor[ed]" this statement, and if the Defendants had taken the position they now hold, that Interrogatory No. 6 only requested facts, "the parties would have had an opportunity either to work toward a resolution or to seek a court decision on the issue.... Microsoft did not raise any objection or refusal to answer in accordance with IVS's understanding of the interrogatory." ECF No. 250 at 2-3. Second, IVS argued that Microsoft's initial response to Interrogatory No. 6, which provided a disclaimer and a response prior to the list of patents and publications, "makes it clear that Microsoft understood Interrogatory No. 6 to require contentions and some detail beyond a list of references." Id. at 3. IVS additionally referenced the Defendants' supplemental responses which included citations to case law and other arguments. See id. at 4. In response to these arguments, the Defendants claimed that their "diligent work to identify references and provide claim charts, narratives, and citations to specific references should not be used to punish Defendants, " when "the interrogatory merely asked for the factual bases for Defendants' defense." ECF No. 246 at 10.
Preliminarily, Interrogatory No. 6 is not a contention interrogatory. A contention interrogatory requires that "an answer to the interrogatory involves an opinion or contention that relates to fact or the application of law to fact." Fed.R.Civ.P. 33(c) ("Rule 33(c)"). As is apparent from the plain reading of Interrogatory No. 6, it only requested the factual bases for the Defendants' denials and affirmative defenses. See ECF No. 238, attach. 4 at 3 ("State in detail each and every fact upon which you base any denials or affirmative defenses asserted in Your Answer to IVS' Complaint"). Strikingly absent from Interrogatory No. 6 is any request for "an opinion or contention" as contemplated by Rule 33(c). Indeed, "the Interrogator[y] do[es] not ask Defendants to explain why or how, as a matter of opinion or otherwise, such prior art establishes the invalidity of Plaintiff's patent, nor do[es] the Interrogator[y] require Defendants to advance legal argument in support of their defense or counterclaim." Dot Com Entm't Grp., Inc. v. Cyberbingo Corp., 237 F.R.D. 43, 44 (W.D.N.Y. 2006) (determining that an interrogatory requesting the defendants to "[s]tate all facts upon which defendants base their allegation" was not a contention interrogatory"). Accordingly, Interrogatory No. 6 was simply requesting facts, not contentions.
Moreover, even to the extent that Interrogatory No. 6 could be considered a contention interrogatory, there is no dispute that the Defendants did disclose all prior art references identified by IVS in the present Motion. Apparently, IVS's only quibble with the Defendants' response is that these references were not provided in claim chart form, as IVS does not identify any specific legal argument, opinion, or contention that was not disclosed previously. IVS conclusorily argued that the Defendants "add[ed] new contentions after fact discovery ha[d] closed, " but IVS does not identify what contentions were not disclosed previously, beyond its citation to prior art references not included in claim charts. ECF No. 250 at 4-5; see ECF No. 238 at 8-9. At no point in IVS's Motion, Memorandum in Support, or Reply does IVS identify the substance of the opinions or contentions allegedly proffered for the first time in the Bhagavatula Report. "[J]udges are not mind readers, " and they cannot "conjure up questions never squarely presented to them." Beaudett v. City of Hampton, 775 F.2d 1274, 1278 (4th Cir. 1985). If IVS wished to argue that the Bhagavatula Report presented new opinions or contentions not previously disclosed in response to Interrogatory No. 6, IVS needed to identify those opinions and contentions beyond conclusory assertions. Although pro se parties are afforded liberal construction of their pleadings, represented parties are not. Backus v. City of Parkersburg, 980 F.Supp.2d 741, 745 (S.D. W.Va. 2013). Accordingly, to the extent that IVS argued that the Defendants failed to disclose opinions and contentions beyond the identified ...