United States District Court, D. New Jersey, Camden Vicinage
Eagle View Technologies, Inc. et al., Plaintiffs,
Xactware Solutions, Inc. et al., Defendants.
KUGLER UNITED STATES DISTRICT JUDGE
patent infringement action brought by Eagle View Technologies
and Pictometry International (together
“Plaintiffs”) against Xactware Solutions and
Verisk Analytics (together “Defendants”),
plaintiffs seek to appeal from a portion of Magistrate Judge
Schneider's order dated 29 November 2017
Doc. 330) (“the Order”), which ruled upon
defendants' Motion to Strike New Infringement Theories
and New Invention and Priority Dates (Doc. 281) (“the
Motion”). Plaintiffs appeal the specific ruling in that
Order which struck both plaintiffs' July 2017 response to
defendants' interrogatory number 7 regarding reduction to
practice dates and the documentation supporting that
response, including source code, newly produced in 2017.
reasons below, Plaintiffs' appeal of the ruling on the
dispute over invention dates in the Order IS
DENIED. An appropriate Order accompanies.
AND PROCEDURAL HISTORY
Court assumes the parties' familiarity with the factual
background and procedural history in this matter and
summarizes those facts relevant to the instant appeal. This
matter relates to Magistrate Judge Schneider's findings
regarding whether plaintiffs had fulfilled their disclosure
obligations under the Local Patent Rules (“L. Pat. R.)
and his application of L. Pat. R. 3.7 to plaintiffs'
responses to defendants' interrogatory 7 and
plaintiffs' documents produced therewith, set forth in
his Opinion (Doc. 329) (“the Opinion”)
accompanying the Order.
Motion to Strike New Infringement Theories and New Invention
and Priority Dates (Doc. 281), which was the subject of the
Order, relates in relevant part to the extent of new
information plaintiffs added over time to their successive
responses to defendants' interrogatory number 7, and
whether plaintiffs' new information supplemented or
amended their earlier responses.
December 2015, as required by L. Pat. R. 3.1 and according to
the Scheduling Order (Doc. 38) plaintiffs served their
disclosure of asserted claims and infringement contentions
(“the Rule 3.1 disclosure”). In their Rule 3.1
disclosure, plaintiffs equated the “earliest
date” for each asserted patent with the priority date
listed on the patent face. L. Pat. R. 3.2(b) obliges
plaintiffs to produce all documents (or make them available)
showing conception / reduction to practice of each claimed
invention created on or before the earliest date (“Rule
3.2(b) documentation”). Notwithstanding this required
documentation, the local rules do not correspondingly
obligate disclosure of specific conception and
reduction to practice dates. To fill that gap, on 31 December
2015, defendants served interrogatory 7, seeking
plaintiffs' conception and reduction to practice dates of
all asserted claims. Doc. 282-10
February 2016, plaintiffs responded to interrogatory 7 not
with specific dates but by referring to general information
in their Rule 3.1 disclosure and Rule 3.2 documentation. Upon
defendants' further request, plaintiffs supplemented
their response on 9 September 2016 with conception dates but
no actual reduction to practice dates. (Doc. 282-12). In
January 2017, almost a year later, defendants sought to amend
their invalidity and non-infringement contentions under L.
Pat. R. 3.7 (Docs. 160) and served plaintiffs with proposed
amended contentions that asserted a new prior art reference,
U.S. Pat. No. 8, 417, 061 to Kennedy et al.
(“Sungevity”). Defendants' motion being granted 01
May 2017, Sungevity now buttressed their invalidity
learning of defendants' use of Sungevity, plaintiffs'
attorneys asked clients and third parties to do a deeper dive
into their records for more detail on invention dates and
supporting documents. On 6 June 2017, plaintiffs gave their
second response to interrogatory 7 (Doc. 293: 6). On 12 July
2017, they added to this response (Doc. 293:10), and on 19
July 2017, gave their third response. (Doc. 282-10). Also in
July 2017, for the first time, plaintiffs produced reduction
to practice documentation under Rule 3.2(b), newly gotten
from the recent search. Transcript of 18 Oct 2017 Oral
Argument at 6:17-25.
relevant portion of their Motion to Strike New Infringement
Contentions, defendants asserted: plaintiffs' July 2017
response to interrogatory 7 differed considerably from their
September 2016 response in terms of invention dates for six
of the seven asserted patents; and, the responsive documents
supporting the July 2017 reply were newly produced without
the diligence required by L. Pat. R. 3.7. Defendants also
sought to strike plaintiffs' 2017 interrogatory response
but did not expressly ask to strike the newly-produced,
response, plaintiffs contended: their supplemental answers to
interrogatory 7 regarding specific invention dates were
consistent with their prior responses and disclosures (Doc.
293: 29-30, 33); and only after defendants added Sungevity
to their invalidity contentions in May 2017, were they
required to update their answers with more specifics. Doc.
293: 33. Plaintiffs also argued that, since defendants had
known about Sungevity for years and belatedly chose to assert
it and seek further comparative information about
plaintiffs' invention dates, (Id.) plaintiffs
were therefore compelled to do a more extensive search for
invention and reduction to practice documentation. Further,
plaintiffs argued that, even if the July 2017 answers to
interrogatory 7 encompassed substantially different
information than that which they originally had provided, the
new information was acquired quickly- therefore a diligent
response-and cannot be deemed prejudicial because the
updating was occasioned solely because of defendants'
initiative to assert Sungevity. Id. at 34.
relevant portion of his opinion, Magistrate Judge Schneider
ruled that: plaintiffs' July 2017 responses regarding
invention and conception dates did not supplement, but rather
amended their earlier interrogatory responses, which required
plaintiffs to show diligence, which they had failed to do. He
also ruled, even though defendants had not expressly asked to
strike plaintiffs' newly produced documentation (which
included source code) responsive to L. Pat. R. 3.2(b),
defendants had intended to so request and had corrected their
oversight in oral argument. Because of that correction, his
ruling that struck plaintiffs' newly produced
documentation was reasonable.
United States Magistrate Judge may hear and issue a decision
on a non-dispositive, pre-trial matter pending before the
court. 28 U.S.C. § 636(b)(1)(A); Cardona v. General
Motors Corp.,942 F.Supp. 968, 970 (D.N.J.1996);
see Federal Rule of Civil Procedure 72(a)
(“Fed. R. Civ. P.” or “Rule”). The
district court reverses a magistrate judge's decision
only if it is “clearly erroneous or contrary to
law” (28 U.S.C. § 636(b)(1)(A); Fed.R.Civ.P.
72(a); L. Civ. R. 72.1(c)(1)(A)). The appellant has the