The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge
MEMORANDUM OPINION AND ORDER
On July 20, 2009, Plaintiff Morningware, Inc. ("Morningware") filed a Complaint against Defendant Hearthware Home Products, Inc. ("Hearthware") alleging: (1) unfair competition in violation of 15 U.S.C. § 1125(a); (2) product disparagement in violation of 15 U.S.C. § 1125(a)(1)(B); (3) deceptive trade practices in violation of 815 ILCS 510/2; (4) common law unfair competition; and (5) commercial disparagement. On August 24, 2009, the Court consolidated the present lawsuit with Hearthware's patent infringement lawsuit against Morningware. In its August 10, 2009 Complaint, Hearthware alleged that Morningware infringed United States Patent No. 6,201,217 ("the '217 patent") entitled "Counter-Top Electric Cooker." Hearthware also brought a trade dress infringement claim under 15 U.S.C. § 1125(a), a deceptive trade practices claim in violation of 815 ILCS 510/2, and a claim based on common law unfair competition. Before the Court is Morningware's motion pursuant to Federal Rules of 16(f) and 37 to strike Hearthware's Northern District of Illinois Local Patent Rule 3.1 Final Infringement Contentions and to dismiss Hearthware's infringement claims from this lawsuit.
For the following reasons, the Court grants in part and denies in part Morningware's motion. The Court grants Hearthware leave to amend its "Final Infringement Contentions" regarding claim limitations 1(b)(2) and 1(c) by no later than October 1, 2010. Further, the Court strikes Hearthware's final contentions concerning the doctrine of equivalents arguments that Hearthware brought in the alternative to its literal infringement claims. The Court denies Morningware's motion as to the remainder of the Final Infringement Contentions and will not dismiss Hearthware's infringement claims from this lawsuit.
Although Morningware labeled the present motion as a motion to strike pursuant to Federal Rules of Civil Procedure 16(f) and 37 in which Morningware seeks the sanction of dismissing Hearthware's infringement claims, the substance of Morningware's motion is that Hearthware failed to properly provide detailed Final Infringement Contentions as required by Local Patent Rules ("LPR") 2.2 and 3.1. Courts are hesitant to dismiss claims as a sanction under Rules 16(f) and 37 and only do so in extreme cases. See Negrete v. National R.R. Passenger Corp., 547 F.3d 721, 723-74 (7th Cir. 2008); see also Banco Del Atlantico, S.A. v. Woods Indus., Inc., 519 F.3d 350, 354 (7th Cir. 2008) ("a sanction of dismissal is a last resort which can only be employed in rare cases"); Spain v. Board of Educ. of Meridian Cmty. Unit Sch. Dist., 214 F.3d 925, 930 (7th Cir. 2000) ("Dismissal should be used "'only in extreme situations, when there is a clear record of delay or contumacious conduct, or when other less drastic sanctions have proven unavailable.'") (citation omitted). This is not one of those extreme cases, and thus, the Court construes the present motion as a motion to strike certain Final Infringement Contentions, as well as a motion to compel more detailed Final Infringement Contentions pursuant to LPR 2.2 and 3.1.
NORTHERN DISTRICT OF ILLINOIS LOCAL PATENT RULES
The initial disclosures under LPR 2.2 through 2.5 obligate patent litigants to disclose the basis for their allegations -- the purpose of which is to identify the issues in the case and allow the parties to narrow their discovery requests. See Judge Matthew F. Kennelly, Edward D. Manzo, Northern District of Illinois Adopts Local Patent Rules, 9 J. Marshall Rev. Intell. Prop. L. 202, 212 (2010); see also N.D. Ill. LPR 1.6 cmt. First, the party claiming patent infringement serves its "Initial Infringement Contentions" that require the party claiming infringement to "identify the patent claims it contends are infringed and each accused instrumentality (product, process, etc.) and to provide a statement of whether each element is believed to be found literally or via the doctrine of equivalents." Kennelly, supra, at 212. "LPR 2.3 requires the accused infringer to serve initial contentions explaining the basis for any claims of non-infringement, unenforceability, and invalidity." Id. at 213. Thereafter, LPR Rule 3.1 requires service of "Final Infringement Contentions" and LPR 3.2 requires the accused infringer's response to the final contentions. See id. at 216. The "Final Infringement Contentions" must provide the information required in the initial disclosures under LPR 2.2. See N.D. Ill. LPR 3.1.
On July 6, 2010, Hearthware served its Final Infringement Contentions asserting that Morningware's counter-top electric oven ("Halogen Oven" or "Morningware Oven") infringes claims 1 and 3 of the '217 patent. In the present motion, Morningware argues that Hearthware's Final Infringement Contentions "are replete with evasive, incomplete, cut-and-past [sic] allegations." The Court addresses Morningware's arguments in turn.
I. "A Cooking Enclosure Including an Upper Surface with an Opening Therein"
First, Morningware maintains that Hearthware's Final Infringement Contention as to claim limitation 1(a) -- "a cooking enclosure including an upper surface with an opening therein" -- is conclusory because it merely states that: "The Morningware Oven has a dome and a glass tray which together define a cooking including an upper surface enclosure with an opening in the upper surface of the cooking enclosure. See, e.g., MHO000002." Morningware, however, fails to provide Hearthware's full contention for this claim, which also states:
According to Morningware's Initial Non-Infringement Contentions Under LPR 2.3(a), Morningware appears to contend that the Morningware Oven does not satisfy this limitation because it rests on a glass-ceramic tray, rather than a base with a separate metallic pan. Nothing in the plain language of these claim terms, or in the specification or file history of the '217 patent requires the limitations Morningware reads into the term "cooking enclosure." Morningware's noninfringement position appears to rest upon an improper importation of exemplary descriptions from the specification into the claims. Moreover, the limitations Morningware attempts to read into this limitation are clearly set forth in other claims of the '217 patent, see, e.g., claims 5, 12 and 15. Further, should the Court determine the Morningware Oven does not literally infringe this claim limitation, the limitation is satisfied under the doctrine of equivalents as the Morningware Oven's cooking enclosure is insubstantially different from the claimed cooking enclosure, and performs substantially the same function (providing an enclosed space for cooking food) in substantially the same way (providing a dome shaped enclosure with an opening in its upper surface) to achieve the same result (cooking food within an enclosed space).
(R. 132-2, Ex. 2, Ex. A, at 5.)
In the present motion, Morningware specifically argues that Hearthware does not show or properly explain where the upper surface is located in the accused Morningware Oven asking the question: "Is the upper surface on the dome, the glass tray or somewhere else?" Hearthware points out that the cited documentation -- MHO000002 -- is Morningware's own instruction manual for its "Halogen Oven" that contains a diagram showing the glass tray, the polycarbonate dome, and the top of the dome. (Ex. 3, at 2, MHO000002.) Accordingly, Morningware's argument is without merit because the Morningware Oven's upper surface of the cooking enclosure is evident from the cited documentation in Hearthware's final contention.
II. "A Heating Unit Extending into the Cooking Enclosure Through Said Opening"
Next, Morningware argues that Hearthware's claim limitation 1(b)(1) -- "a heating unit extending into the cooking enclosure through said opening" -- is inadequate because the only document Hearthware cites in its Final Infringement Contentions, MHO000003, does not provide details of the 'heating unit." Again, Morningware ...