American River Nutrition, LLC v. Beijing Gingko Group Biological Technology Co., Ltd
8:18-cv-02201
| C.D. Cal. | Dec 14, 2021Background
- Plaintiff American River Nutrition, LLC (ARN) alleges defendants (including Kyäni, Inc.) infringe U.S. Patent No. 6,350,453 (the ’453 Patent) under 35 U.S.C. § 271(g).
- ARN served infringement contentions accusing Claims 1, 5, 7, and 10, but did not identify Claim 6 or provide the element-by-element charts required by Patent Local Rule 3-1 for Claim 6.
- ARN served Dr. David Rockstraw’s expert report (Dec. 30, 2020) that (1) opined infringement of Claim 6 and (2) relied on two additional process documents produced in discovery (a Sept. 2015 SIDI flowchart and an April 2014 manufacturing-process document) not specifically identified in ARN’s infringement contentions.
- Kyäni moved to strike those portions of the Rockstraw report as introducing new claims/theories and accusing instrumentalities not disclosed in ARN’s contentions; Kyäni argued ARN never sought leave to amend.
- The Court found ARN did not exercise the required diligence under the Patent Local Rules, excluded Rockstraw’s opinions on Claim 6 and his opinions that rely on the two additional documents to establish ARN’s prima facie infringement case, and ordered Kyäni to file redacted versions of certain sealed filings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rockstraw may opine that Kyäni infringed Claim 6 though ARN’s contentions did not assert Claim 6 | ARN: Kyäni had notice (Claim 6 asserted against other defendants; claim construction; geranylgeraniol discussed in contentions) | Kyäni: ARN never identified Claim 6 against Kyäni or amended contentions; Patent L.R. 3-1 requires explicit disclosure | Court excluded Rockstraw’s opinions asserting infringement of Claim 6 against Kyäni |
| Whether Rockstraw may rely on two additional process documents produced in discovery (Sept. 2015 SIDI; Apr. 2014 process) to prove infringement though those instrumentalities were not in ARN’s contentions | ARN: Documents describe the same single accused process; contentions need not cite specific evidence; amendment not required each time evidence appears | Kyäni: Contentions only identified a March 2018 SIDI; the two documents disclose additional steps/instrumentalities and ARN failed to amend | Court excluded Rockstraw’s opinions based on those documents for establishing ARN’s prima facie infringement case (reserved limited use for rebuttal of non-infringement) |
Key Cases Cited
- O2 Micro Int’l, Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) (Patent Local Rules require early, specific infringement contentions and limited amendment absent good cause)
- Phigenix, Inc. v. Genentech, Inc., [citation="783 Fed. App'x 1014"] (Fed. Cir. 2019) (exclusion of evidence is appropriate sanction for failure to comply with patent-local rules)
- Wong v. Regents of Univ. of Cal., 410 F.3d 1052 (9th Cir. 2005) (district court may exclude evidence for discovery violations)