Monday, May 13, 2013

“Bone Crushing” Burden of Excessive Infringement Claims Justifies Late Amendment of Invalidity Contentions

The court granted defendant's motion to amend its invalidity contentions to add three new prior art references following claim construction. "Earlier in this action, [plaintiff] imposed upon [defendant] a bone-crushing burden of conducting a prior art search for more than fifty patent claims. This was an unreasonable burden for [plaintiff] to place on its adversary, especially since [it] should have been more selective in choosing claims to assert. . . . [Defendant] has acted reasonably and will be permitted to amend in light of (1) the huge number of claims previously asserted by [plaintiff], (2) the fact that [defendant] seeks to add only three references to a reference list that originally included over fifty, and (3) the fact that [defendant] promptly communicated its intent to update its invalidity contentions to [plaintiff] upon completion of the new prior art search."

Network Protection Sciences, LLC v. Juniper Networks, Inc., et. al., 3-12-cv-01106 (CAND May 9, 2013, Order) (Alsup, J.).

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