To support a request for a permanent injunction, a patent owner will sometimes offer evidence that its own product practices the claimed invention. Some courts require that a patent owner’s product be included in its preliminary infringement contentions should the party wish to rely on such evidence. Further, where a patent owner first attempts to offer such evidence of its product after the preliminary infringement contentions have been served, a court may preclude the party from relying on such evidence as untimely.
In Mediatek, Inc. v. Freescale Semiconductor, Inc. (.pdf), 2013 WL 5236709, *2-3 (N.D. Cal. Sept. 17, 2013), the court ruled that a patent owner’s failure to identify its own product within its preliminary infringement contentions prevented it from relying upon the product as evidence. Rejected was the patent owner’s argument that it need not disclose its product in its preliminary infringement contentions because the product was still under development at the time. More convincing to the court was the argument that the product was required to be disclosed in the preliminary contentions under local patent rule 3-1(g) which states in pertinent part:
“If a party claiming patent infringement wishes to preserve the right to rely, for any purpose, on the assertion that its own apparatus, product, device, process, method, act, or other instrumentality practices the claimed invention, the party shall identify, separately for each asserted claim, each such apparatus, product, device, process, method, act, or other instrumentality that incorporates or reflects that particular claim.”
In its reasoning, the court found there was no credible reason why the patent owner’s product could not have been disclosed in the preliminary infringement contentions. The court also distinguished the opinion in Apple v. Samsung Electronics Co., 2012 WL 5632618, *2-3 (N.D. Cal. Nov. 15, 2012) wherein the court permitted amended infringement contentions that added a new product sold by the opposing party.
Where a patent owner wishes to rely on its own product for any purpose at trial, that party should carefully examine both its existing products and those products under development when preparing its preliminary infringement contentions.