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Keywords

lawsuitlitigationmotionwillpatent
motionpatentobjection

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Brilliant Instruments, Inc. v. GuideTech, Inc., Not Reported in F.Supp.2d, 2011 WL 900369

Facts

Brilliant Instruments, Inc. filed a lawsuit seeking a declaration that its products do not infringe several patents held by GuideTech, LLC. In response, GuideTech counterclaimed for patent infringement and alleged that Brilliant's actions were willful. Brilliant counterclaimed for the invalidity of certain patents. GuideTech moved to strike references in Brilliant's expert report that were not previously identified in its Invalidity Contentions, arguing that these references should not be used to demonstrate invalidity.

Brilliant does not dispute that it did not identify these references in its Invalidity Contentions, which were served on June 17, 2010.

Issue

Whether Brilliant Instruments, Inc. can rely on certain prior art references in its expert report that were not included in its Invalidity Contentions.

Whether Brilliant Instruments, Inc. can rely on certain prior art references in its expert report that were not included in its Invalidity Contentions.

Rule

Under Patent Local Rule 3-3(a), a party's invalidity contentions must include the identity of each item of prior art that allegedly anticipates or renders obvious each asserted claim. Amendments to these contentions require a showing of good cause, which includes demonstrating diligence in discovering new prior art.

Analysis

The court found that Brilliant did not demonstrate good cause to amend its Invalidity Contentions, as the patents in question were expired and publicly available at the time of the original contentions. Since Brilliant failed to identify these patents as relevant prior art, the court ruled that they could not be used in the expert report to support claims of invalidity.

Despite GuideTech's objections to the above-mentioned references, Brilliant has not moved to amend its Invalidity Contentions. Even if it had, it has not demonstrated good cause to amend them. Brilliant indicates only when it discovered the _932 and the _955 patents, both of which are expired patents that were publicly available at the time Brilliant served its Invalidity Contentions. Because Brilliant did not identify these patents as relevant prior art in its Invalidity Contentions, Dr. Kaliski may not use them as prior art to demonstrate invalidity.

Conclusion

The court granted GuideTech's motion to strike the references from Dr. Kaliski's report, ruling that they could not be used as prior art to demonstrate invalidity.

Accordingly, Dr. Kaliski's report is stricken to the extent that he relies on the _932 and _955 patents as prior art that allegedly anticipates the claims asserted in this action or renders such claims obvious.

Who won?

GuideTech, LLC prevailed in this motion as the court granted its request to strike the references from Brilliant's expert report. The court emphasized that Brilliant's failure to include the references in its Invalidity Contentions and its inability to show good cause for amending those contentions were critical factors in the decision. This ruling reinforced the importance of adhering to procedural rules regarding the identification of prior art in patent litigation.

GuideTech, LLC, was apparently erroneously sued as GuideTech, Inc. The court granted GuideTech's motion to strike, emphasizing that Brilliant's failure to identify the patents as relevant prior art in its Invalidity Contentions was a decisive factor.

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