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Eagle View Technologies, Inc. v. Xactware Solutions, Inc.

United States District Court, D. New Jersey, Camden Vicinage

May 29, 2018

Eagle View Technologies, Inc. et al., Plaintiffs,
Xactware Solutions, Inc. et al., Defendants.



         In this 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 (ECF[1] 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.

         For the reasons below, Plaintiffs' appeal of the ruling on the dispute over invention dates in the Order IS DENIED. An appropriate Order accompanies.


         The 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.

         Defendants' 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.

         On 23 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”).[2] 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[3]

         On 29 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.[4] (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.[5] (“Sungevity”).[6] Defendants' motion being granted 01 May 2017, Sungevity now buttressed their invalidity contentions.

         On 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.

         In the 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, supporting documents.

         In 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);[7] 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.

         In the 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.


         A 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 ...

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