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Distric Court Warns that "Patentee's Time For Trolling" Will End Without More Definite Infringement Contention

By Peter Zura

Diagnostis Systems Corp. v. Symantec Corp. et al., SACV 06-1211 DOC (C.D. Cal., June 5, 2009 Order) (Nakazato, A.)

DSC is a wholly-owned subsidiary of Acacia Research Corporation (?Acacia?), and both entities are in the business of acquiring, licensing, and enforcing patented technologies. DSC filed suit against Symantec and others in 2007 alleging patent infringement. At the time DSC's Preliminary Infringement Contentions ("PICs") were due, DSC did not set forth a specific theory of infringement.

In June 2008, DSC was given the source code to 8 of the accused software products, along with executable copies and operating manuals for the accused products. Despite having this information, DSC did not elaborate further on the PICs.

Fed up, the defendants moved the court under Rules 26(e)(1)(A) and 37, as well as for an order compelling DSC to provide a more definite infringement statement. Rule 26(e)(1) states:

?[a] party who has made a disclosure under Rule 26(a) -- or who has responded to an interrogatory, request for production, or request for admission -- must supplement or correct its disclosure or response: (A) in a timely manner if the party learns that in some material respect the disclosure or response is incomplete or incorrect, and if the additional or corrective information has not otherwise been made known to the other parties during the discovery process or in writing; or (B) as ordered by the court.?

Naturally, DSC opposed the motion, claiming that the motion seeks to obtain protected work product information, and that more time and information was needed.

The court flatly rejected DSC's arguments:

The bottom line is that, after a plaintiff-patentee has had a reasonable opportunity to review the source code for the defendant?s accused software product, the patentee?s time for trolling the proverbial waters for a theory of infringement comes to an end, and the patentee must fish or cut bait with respect to its specific theory of infringement by providing PICs to the defendant that clearly identify and explain how the source code for the accused product infringes upon specific claims for the patent-in-suit. For DSC, trolling time is over.

DSC contends that ?MicroStrategy inappropriately seeks to invade the work product
privilege that protects DSC?s consulting experts? opinions from inadverent or unintentional disclosure.? (JS at 16:2-19.) This contention is frivolous and misleading because MicroStrategy is not asking DSC to disclose its expert?s opinions. Rather, MicroStrategy is merely asking DSC to provide PICs that specifically describe or explain its theory of infringement and, specifically, how the source code for its accused products, and other aspects of its accused products, purport to infringe upon the claims for DSC?s ?590 Patent so that MicroStrategy can properly evaluate its defense.

Download a copy of the opinion here (link)

Source: Docket Navigator

Full post as published by Two-Seventy-One Patent Blog on June 11, 2009 (boomark / email).