Federal Judiciary

P.R. 3-1(c) and the requirement of separate claim charts

By Michael Smith

Juxtacomm Technologies, Inc. v. Ascential Software Corp, 548 F.Supp.2d 379 (E.D.Tex. May 02, 2008) (NO. 2:07CV359)
Judge: Leonard Davis
Holding: Motion for Partial Judgment on the Pleadings DENIED
One of the defendants in this patent case sought partial judgment on the pleadings because the plaintiff did not provide separate infringement charts for each product under P.R. 3-1(c).  Plaintiff contended that separate charts weren't necessary because one product infringed only insofar as it incorporated another product (more or less).
Judge Davis noted that Patent Rule 3-1(c) requires a party asserting infringement to provide each defending party a ?Disclosure of Asserted Claims and Infringement Contentions,? which shall contain ?a chart identifying specifically where each element of each asserted claim is found within each Accused Instrumentality.? P.R. 3-1(c). Although the Patent Rules require separate charts for each accused product, he noted that he has allowed plaintiffs to use a single chart applicable to multiple products where separate charts would be identical for each product.
Accordingly, he allowed the plaintiff Juxtacomm to use one chart to accuse both products - but there was a catch. "Use of one chart, however, precludes Juxtacomm from arguing that iWay Service Manager infringes in any manner differently from how iWay DataMigrator infringes. In order to argue a different infringement theory for iWay Service Manager, Juxtacomm will need to separately chart the iWay Service Manager product, which will require good cause to amend its infringement contentions."

Full post as published by Eastern District of Texas Federal Court Practice on September 22, 2008 (boomark / email).