Key Points:

• Local Patent Rule 3.1 refers singularly to “Disclosure of Asserted Claims and Infringement Contentions,” so by default they may be amended together.
• Parties seeking to permit amendment to only Infringement Contentions for existing asserted claims, but not permit additional Asserted Claims, should use clear language in scheduling orders.

New Jersey's Local Patent Rules

In a federal patent dispute in New Jersey, does a scheduling order that imposes a deadline to “Amend Infringement Contentions” also include amendment of a party’s disclosure of asserted claims? U.S. Magistrate Judge Stacey D. Adams answered this question in the affirmative in a recent order.

The District of New Jersey’s Local Rules include a set of specific Local Patent Rules. These rules govern specific timing and scope of exchanges of contentions regarding infringement and invalidity, claim construction, and other issues specific to patent cases.

In an order in UAB Pulsetto v. electroCore Inc., the court addressed LPR 3.1, which is titled “Disclosure of Asserted Claims and Infringement Contentions” and provides that the party asserting patent infringement shall provide a disclosure that, among other things, identifies:

• Each claim of each patent in suit that is allegedly infringed by each opposing party, including for each claim the applicable statutory subsections of 35 U.S.C. § 271 asserted (subpart (a))
• Separately for each asserted claim, each accused apparatus, product, device, process, method, act, or other instrumentality (“Accused Instrumentality”) of each opposing party of which the party is aware… (subpart (b))
• [A] chart identifying specifically where each limitation of each asserted claim is found within each Accused Instrumentality… (subpart (b))

The Initial Pretrial Scheduling Order identified a deadline to serve “Disclosure of Asserted Claims and Infringement Contentions.” The court later amended the scheduling order to include a “Deadline for both parties to Amend Infringement Contentions.”

Request to Strike

According to Pulsetto, when electroCore served its Amended Infringement Contentions, it also improperly included 62 newly asserted claims. In a motion to strike, Pulsetto argued this was improper because the deadline pertained to amendment of infringement contentions only, and did not permit amendment to asserted claims.

In response, electroCore noted that it made ministerial errors in its amended contentions and was only seeking to add 16 new claims. But the company argued that this was expressly authorized by the scheduling order because amendment of infringement contentions implicitly includes asserted claims. It noted that LPR 3.1 jointly references “Disclosure of Asserted Claims and Infringement Contentions,” so it would be nonsensical for the court to permit amendment of one but not the other.

The court agreed with electroCore, noting that LPR 3.1 does not distinguish between disclosure of asserted claims and infringement contentions, but rather lists them singularly in quotation marks.

The court also noted that LPR 3.7 refers to “[a]mendment of any contentions, disclosures, or other documents” but does not separately reference “asserted claims,” suggesting that it is included with reference to “contentions.” Concluding that electroCore’s addition of asserted claims was permitted, the court denied Pulsetto’s request to strike.

Paul W. Kalish and Jonathan J. Madara are members of the IP Litigation team in Fox Rothschild’s Princeton, NJ office and write about patent litigation decisions in the District of New Jersey. Contact Paul at pkalish@foxrothschild.com or 609.895.6751 and Jonathan at jmadara@foxrothschild.com or 609.844.7428.

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