United States District Court, W.D. Pennsylvania
MEMORANDUM OPINION AND ORDER OF COURT
TERRENCE F. McVERRY, District Judge.
Pending before the Court are DEFENDANT ACCURAY'S EXPEDITED MOTION TO STRIKE BMI'S INFRINGEMENT CONTENTIONS (ECF No. 202), with exhibits and brief in support. Plaintiff Best Medical International, Inc. ("BMI") filed a brief in opposition to the motion and an attached exhibit under seal. Accuray filed a reply brief and the motion is ripe for disposition. The Court notes that the stay of this case has been lifted upon the entry of appearance by new counsel on behalf of BMI.
Factual and Procedural Background
This is a technologically and procedurally complex patent infringement case which BMI initiated on August 6, 2010. Only Count 9 of the Amended Complaint (alleging direct infringement of Claim 25 of the 283 Patent) remains before the Court. Claim 25 of the 283 Patent provides, in relevant part:
An apparatus for determining an optimized radiation beam arrangement for applying radiation to a tumor target volume while minimizing radiation of a structure volume in a patient, comprising: [...] the computer further adapted to incorporate a cost function at each iteration to approach correspondence of partial volume data associated with the proposed radiation beam arrangement to partial volume data associated with a pre-determined desired dose prescription...
Claim construction has been completed. As relevant to the instant motion, the Court concluded at the Markman stage that: (1) Claim 25 is not limited to the Simulated Annealing Optimization Algorithm ("SARP"); (2) the term "Cost Function" is not limited to the cost function disclosed in the '283 Patent and does not mandate the use of the formula described in columns 4 and 13 to the exclusion of all other possible optimization formulas; and (3) recognized that issues of indefiniteness, invalidity and/or infringement would be resolved at a later date. The claim construction largely adopted the contentions advocated by BMI and rejected those of Accuray. The terms "optimized, " "partial volume data" and "iteration" were not disputed, and therefore, were not interpreted by the Court. Discovery is essentially complete, except for sixteen depositions. The next phase of the litigation will encompass expert disclosures and expert discovery.
There have been numerous disputes throughout this litigation regarding BMI's Infringement Contentions. By initiating a patent case in this Court, BMI has necessarily been on notice that the Local Rules of Practice for Patent Cases before the United States District Court for the Western District of Pennsylvania ("LPR") are applicable, including the disclosure requirements set forth in LPR 3.2. Unfortunately, early in the litigation BMI repeatedly failed to comply with its disclosure obligations. As a result, the Court granted several motions to compel filed by Accuray, and ordered BMI to pay counsel fees to Accuray as a sanction. On June 30, 2011, the Court observed that BMI's belated and apparent lackadaisical approach to its disclosure obligations under the Local Patent Rules was unacceptable and ordered BMI to "strictly comply with all of its obligations under the Local Patent Rules throughout the remainder of this case."
BMI served its initial Infringement Contentions on June 13, 2011, the deadline set forth in the Case Management Order. Accuray promptly notified BMI that, in its view, the Infringement Contentions were deficient in numerous respects and requested supplementation. On July 14, 2011, BMI served an amended infringement chart. On July 18, 2011, Accuray notified BMI that the amendment failed to cure the alleged deficiencies it had identified in the original chart. By Order dated August 19, 2011, the Court held that BMI's infringement contentions lacked the requisite specificity and explained that BMI was not entitled to engage in willful ignorance of Accuray's initial disclosures in order to evade its duty of specificity under LPR 3.2.
BMI has made numerous revisions to its infringement contentions. On October 24, 2011, BMI dramatically revamped its Infringement Contentions by creation of a "Supplemental Claim Chart." However, disputes continued and culminated in another motion by Accuray to strike BMI's infringement contentions (ECF No. 117). As relevant to the instant motion, Accuray asked the Court to strike BMI's contentions with respect to Claim 25 based on the "Simplex Optimization Algorithm, " the "Iterative Optimization Algorithm, " and the "Sequential Optimization Algorithm." Among other arguments, Accuray contended that BMI cited to documents which reference Sequential Optimization as support for infringement contentions that are based on Simplex Optimization. By Order of December 19, 2011, the Court denied Accuray's motion and ruled that BMI's infringement contentions were sufficiently specific for Accuray to prepare its responsive non-infringement contentions. On July 13, 2013, the Court struck BMI's infringement contentions regarding the doctrine of equivalents. In all, BMI has provided ten versions of its infringement contentions. The most recent version is set forth in BMI's Third Amended Supplemental Claim Chart dated November 27, 2013 ("Claim Chart").
Accuray moves to strike BMI's Infringement Contentions regarding: (1) Simplex Optimization and Iterative Optimization; and (2) Sequential Optimization for versions of the MultiPlan prior to version 4.5. Specifically, Accuray contends that: (1) the documentary citations in the Claim Chart pertain only to Sequential Optimization and thus cannot support BMI's claims regarding the Simplex Optimization or Iterative Optimization algorithms; and (2) the citations refer only to version 4.5 and later of the MultiPlan and thus BMI has not supported its claims as to earlier versions of the MultiPlan. Accuray further seeks to deny BMI an opportunity for leave to amend its contentions.
Accuray contends that BMI has had sufficient information to provide more-detailed contentions, including the official Design History Files for all versions of the MultiPlan, but has employed a "shifting sands" approach as a smokescreen to avoid dismissal of this case. To wit, Accuray contends that the broad definition of the term "Cost Function" which was advocated by BMI and adopted by the Court at the Markman stage renders Claim 25 invalid due to the prior art; and in response, BMI has changed its theory of the case to contend that Claim 25 covers only cost functions that use "partial volume data."
Accuray contends that BMI is using contradictory definitions of the term "partial volume data" for invalidity and infringement. As relevant to the pending motion, Accuray argues that BMI's Claim Chart fails to show how Simplex Optimization ...