In patent litigation governed by the local patent rules, a plaintiff patent owner is required to disclose original infringement contentions.   The patent owner also sometimes discloses amended infringement contentions that add new accused products as more information is obtained in discovery.  A patent owner may also choose to withdraw certain infringement contentions on certain accused products in its amendments for strategic reasons.  In this scenario, one question that arises is whether a patent owner may reassert infringement of an accused product that was originally cited as infringing but later not included in an amended infringement contention.

In LMT Mercer Group v. Maine Ornamental (.pdf) , 2014 WL 284238 (D.N.J. Jan. 24, 2014), Judge Wolfson ruled that a plaintiff patent owner was not allowed to reassert infringement of the originally accused Polaris Light product when its subsequent first and second amended infringement contentions did not include the Polaris Light product.  In December of 2010, plaintiff filed its complaint asserting infringement of the Polaris Light product among others.  In December of 2012, plaintiff filed its original Local Patent Rule 3.1 infringement contentions that also included the Polaris Light product.  In January of 2013, plaintiff filed its first amended infringement contentions that did not include the Polaris Light product and further stated that “The Supplemental Infringement Contentions are herein supplemented at the request of Defendant, and hereby supersedes the Infringement Contentions.”  In March of 2013, plaintiff served its second amended infringement contentions, but again did not include the Polar Light product.  At this time, plaintiff’s attorney discussed the reassertion of Polaris Light as an accused product, but defendant’s attorney would not consent to that reassertion.  Soon after, defendant filed a motion for summary judgment stating that plaintiff had waived its right to reassert infringement of the Polaris Light product.  Plaintiff filed a motion to reassert the Polaris Light product as an infringing product.

In its reasoning, the Court first declined to apply the “law of waiver” under New Jersey state law.  Instead, the Court found that Federal Circuit law and the local patent rules, not New Jersey law, should resolve this question.  On the issue of waiver, the Court found that questions of material fact relating to the intent to waive precluded defendant’s summary judgment motion.  Nonetheless, the Court found that plaintiff did not have “good cause” to reassert the Polaris Light product as an infringing product.  Therefore, the alleged infringement of the Polaris Light product was eliminated from the case.  Id. at p. 16.

Key takeaway:   Patent Owners asserting infringement should carefully include all infringing products in all of its amended infringement contentions. Otherwise, a court may prevent that party from reasserting an accused product at a later stage.