1:16-cv-09179
N.D. Ill.May 9, 2017Background
- Oil-Dri sued Nestlé alleging infringement of U.S. Patent No. 9,408,368 relating to lightweight clumping cat litter (four Tidy Cats products accused). The patented composition requires sodium bentonite (NaB) to comprise ≥47% of external surface area (ESA), a granular filler (perlite) to comprise specified ESA percentages (5–53%, etc.), and the mixture to be removably clumpable.
- Oil-Dri served Initial Infringement Contentions under N.D. Ill. L.P.R. 2.2 on Dec. 2, 2016, and then served Revised Contentions on Dec. 28, 2016 adding specificity (including alleging §271(a) and §271(b) conduct and revised priority-date assertions).
- Nestlé moved to strike parts or all of Oil-Dri’s contentions, arguing the revisions were untimely, boilerplate, used placeholders, attempted to shift priority dates, and failed to meet LPR specificity requirements (including for induced infringement, preservation of plaintiff’s own-use contentions, doctrine-of-equivalents detail, and willfulness basis).
- The Court treated Nestlé’s motions largely as motions to compel more detailed infringement contentions, recognizing local rules’ notice function and that striking contentions is a severe sanction used sparingly.
- The Court required Oil-Dri to amend certain portions within 21 days (provide more detail on induced infringement knowledge, final specific priority dates, and doctrine-of-equivalents particulars), denied striking Oil-Dri’s added assertion that its own products practice the invention, and declined to strike the contentions in their entirety.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Allegation of induced infringement (§271(b)) | Oil-Dri said induced claim was discovered after initial contentions and Revised Contentions sufficiently describe advertising/marketing to retailers | Nestlé said induced theory was untimely, not in complaint/initial contentions, and lacked required knowledge allegations | Court treated motion as to compel more detail; granted in part — Oil-Dri must disclose Revised Contentions showing Nestlé’s knowledge within 21 days |
| Addition of plaintiff’s own-use/practice under LPR 2.2(h) | Oil-Dri said counsel later learned Oil-Dri had commercialized products practicing the invention and promptly revised contentions | Nestlé said Oil-Dri failed to preserve right in initial contentions and provided insufficient description | Denied strike; Court allowed amendment as timely and not prejudicial given prompt revision and ongoing discovery |
| Attempt to assert earlier priority dates (ranges/ambiguous language) | Oil-Dri asserted earlier dates for certain claim elements and said discovery continues; provided initial earlier date in initial contentions | Nestlé argued "shifting sands," demanded fixed dates and prejudice from ambiguity | Court refused severe sanction; ordered Oil-Dri to serve Revised Contentions within 21 days stating final, specific priority dates (no ranges or "at least" language) and forbade further amendment |
| Boilerplate/placeholders; doctrine of equivalents specificity; willful infringement basis | Oil-Dri argued its charts and supporting materials (MSDS, testing, advertising) gave fair notice and alleged willfulness via prior publications and litigation notice | Nestlé argued contentions were boilerplate, used placeholders for equivalents, and failed to identify basis for willfulness | Court declined to strike contentions in full; required Oil-Dri to amend equivalents explanations within 21 days; held willfulness allegation adequate at this stage (based on Oil-Dri’s 2011 annual report publicity and prior litigation) |
Key Cases Cited
- O2 Micro Intern. Ltd. v. Monolithic Power Sys., 467 F.3d 1355 (Fed. Cir. 2006) (initial infringement contentions require notice-pleading-level specificity to prevent shifting sands)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (induced infringement requires that defendant had knowledge that the induced acts constituted infringement)
- Howmedica Osteonics Corp. v. Zimmer, 822 F.3d 1312 (Fed. Cir. 2016) (district courts have broad discretion interpreting local patent rules)