United States District Court, D. Minnesota
Timothy E. Grimsrud, Linzey A. Erickson,, Faegre Baker Daniels LLP, for Plaintiff; and
William J. Cass, Cantor Colburn, LLP, for Defendant.
TONY N. LEUNG, Magistrate Judge.
This matter is before the Court, United States Magistrate Judge Tony N. Leung, on Defendant Microboards Technology LLC's ("Afinia") Motion to Compel Infringement Contention, and, in the Alternative, to Exclude Additional Infringement Theories (ECF No. 110). The Court heard oral argument on February 17, 2015. ( See ECF No. 137.) William Cass argued on behalf of Afinia, and Timothy Grimsrud argued on behalf of Plaintiff Stratasys, Inc. ("Stratasys"). For the reasons set forth herein, Plaintiff's Motion (ECF No. 110) will be denied.
Stratasys commenced this lawsuit on November 25, 2013, alleging that Afinia offers for sale an H-Series 3D Printer that infringes on various patents held by Stratasys. (ECF No. 1.) Afinia denied infringement and filed counterclaims for declaratory judgments of non-infringement and invalidity. (ECF No. 15.) The patent-in-suit at issue in the present motion, U.S. Patent No. 8, 349, 239 ("the 239 patent"), is entitled "Seam Concealment for Three-Dimensional Models." In layperson's terms, the 239 Patent concerns a method of 3D printing that is designed to conceal seams for aesthetic and functional purposes.
The Pretrial Scheduling Order provides the following with respect to the parties' claims charts and what they must contain:
The Claim Chart shall identify: (1) which claim(s) of its patent(s) it alleges are being infringed; (2) which specific products or methods of defendant's it alleges literally infringe each claim; and (3) where each element of each claim listed in (1) is found in each product or method listed in (2), including the basis for each contention that the element is present.
(ECF No. 144 at 1.) Stratasys produced its claim charts to Afinia on September 2, 2014. In its claim chart, Stratasys provided an annotated picture of a three-dimensional model that purported to show how the H-Series 3D Printer infringed on the 239 patent. (Cass Decl., ECF No. 113, Ex. A.) Stratasys's claim charts do not identify specific portions of source code that allegedly infringe on the 239 patent.
With the instant motion, Afinia argues that Stratasys's infringement contentions with respect to the 239 Patent are insufficient. Afinia argues that Stratasys's claim charts fail to identify exactly which portions of the source code at issue infringe on its patent, and that this failure either (a) requires Stratasys to supplement its claim charts and specifically identify the source code that infringes the 239 patent; or (b) merits an order precluding Stratasys from advancing additional infringement theories that would use source code to prove up its infringement claims.
A. Legal Standard
Claim charts must contain enough information to provide notice of the party's infringement contentions and defenses, but they are not meant to be a substitute for discovery. "Claim charts must be sufficiently specific only to provide reasonable notice to the defendant why the plaintiff believes it has a reasonable chance of proving infringement and raise a reasonable inference that all accused products infringe. Contentions that fail to provide defendant with fair notice of the plaintiff's infringement theories are insufficient and must be amended.'" Bombardier Recreational Prods., Inc. v. Arctic Cat, Inc., No. 12-cv-2706 (MJD/LIB), 2014 WL 2945877 at *4 (D. Minn. Apr. 28, 2014) (quoting Digital Reg of Tex., LLC v. Adobe Sys. Inc., CV 12-01971-CW (KAW), 2013 WL 3361241 (N.D. Cal. July 3, 2013)).
Claim charts are "designed specifically to require parties to crystallize their theories of the case early in the litigation' so as to prevent the shifting sands approach to claim construction.'" O2 Micro Intern. Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355, 1364 (Fed. Cir. 2006) (quoting Atmel Corp. v. Info. Storage Devices, Inc., No. C 95-1987 FMS, 1998 WL 775115, at *2 (N.D. Cal. Nov. 5, 1998)). Identifying and solidifying theories of liability early in a case through claim charts that clearly identify infringement contentions serves to focus discovery efficiently. Early disclosure of claim charts is generally meant to "make the parties more efficient, to streamline the litigation process, and to articulate with ...