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Oil-Dri Corporation of America v. Nestle Purina Petcare Co.

United States District Court, N.D. Illinois, Eastern Division

May 9, 2017

OIL-DRI CORPORATION OF AMERICA, Plaintiff,
v.
NESTLÉ PURINA PETCARE COMPANY, Defendant.

          MEMORANDUM OPINION AND ORDER

          Virginia M. Kendall United States District Court Judge

         Defendant Nestlé Purina Petcare Company (“Nestlé”) filed four Motions to Strike Infringement Contentions disclosed by Plaintiff Oil-Dri Corporation of America (“Oil-Dri”). For the below reasons, the Court grants in part and denies in part Nestlé's Motions to Strike for Oil-Dri's Assertion of Alleged Induced Infringement [55], Addition of Alleged Use of the Purported Invention [58], Attempt to Claim an Earlier Priority Date [60, 70][1], and Initial & First Revised Infringement Contentions [80].

         BACKGROUND

         On September 23, 2016, Oil-Dri sued Nestlé for patent infringement of its cat litter product U.S. Patent No. 9, 408, 368 (“‘368 Patent”) pursuant to 35 U.S.C. § 271 et. seq. (Dkt. 1, at 1-2.) The patent implicates four Tidy Cats Lightweight products: 4-in-1 Strength; 24/7 Performance; Glad Tough Odor Solutions; and Instant Action (“Accused Instrumentalities”). (Id., ¶ 7.) The products use clumping clay composed of sodium bentonite (“NaB”) and a mineral known as “perlite.” (Id. at 9.) The ‘368 Patent specifies, in pertinent part, that: NaB comprises at least 47% of the product's external, exposed surface area (“ESA”); the ESA of the granular material be 5-53% of the total ESA of the mixture; and the mixture be “removably clumpable.” (Id.)

         Oil-Dri timely provided its Initial Infringement Contentions Pursuant to Local Patent Rule 2.2 (“Initial Contentions”) on December 2, 2016. (Dkt. 56-1, at 2; Dkt. 28, at 1, 3.) In its Initial Contentions, Oil-Dri accused Nestlé of infringing the claims of the ‘368 Patent “pursuant to 35 U.S.C. § 271 et. seq” through “the manufacture, use, offer for sale and the sale of the Accused Products (or through earlier compositions, provided during the manufacturing process)….” (Dkt. 56-1, at 2, ¶ a-b; Dkt. 56-1, at 6.) Oil-Dri contended that each of the Accused Instrumentalities literally infringes or, to the extent that any element is not found, that its equivalent is present. (Dkt. 56-1, at 3, ¶ d.) Oil-Dri stated that it did not believe that Local Patent Rules (“LPR”) 2.2(e) or 2.2(h) were relevant. (Id., at 3-4, ¶¶ e, h.) Further, Oil-Dri stated that it was entitled to a priority date of “at least as early as the June 25, 2012 filing date of U.S.S.N. 13/524, 021” and “likely as early as February 9, 2012 based on earlier documentation, although the analysis of discovery continues.” (Id., at 3, ¶ f.) Oil-Dri also accused Nestlé of willful infringement, contending that Nestlé “has known of the ‘368 Patent, or any of the prior-filed, published patent applications in its priority chain” (including Application 13/524, 021, published December 20, 2012) due to a March 2014 letter from Oil-Dri Vice President and General Counsel, Doug Graham, to Nestlé's President, Nina Krueger, about Patent No. 5, 975, 019 (“‘019 Patent”) and earlier, ongoing litigation between the parties about ‘019 Patent (in Case No. 15-CV-1067). (Id., at 3-4, ¶ g.) Oil-Dri also alleges that it believes any claim element literally infringes, but “[t]o the extent that any claim element is found not to be present in any of the Accused Instrumentalities, then Oil-Dri believes that its equivalent is present.” (Id., at 3, ¶ d.) Alongside its Initial Contentions, Oil-Dri stated that it “reserves the right to supplement these disclosures as further information becomes available.” (Id., at 2.) Attached to its Initial Contentions, Oil-Dri provided an asserted claims chart which accused Nestlé of infringing on Claims 4-6 of ‘368 Patent for a composition where the granular filler material comprises anywhere from 5-53% (Claim 4), 10-53% (Claim 5), and 15-53% (Claim 6) of the ESA. Oil-Dri based its claims on Nestlé's Material Safety Data Sheets, Oil-Dri testing, and Nestlé's disclosed advertising (see Dkt. 56-3, at 6-9; Dkt. 56-3, at 13-14.)

         The parties participated in a Rule 26(f) planning phone conference on November 18, 2016, where the parties agreed that the final date for Oil-Dri to amend its pleadings would be December 7, 2016. (Dkt. 28, at 4.) After this date passed, on December 28, 2016, Oil-Dri sent Revised Initial Infringement Contentions (“Revised Contentions”) to Nestlé. The Revised Contentions accused Nestlé of violating specific subsections of the underlying patent infringement statute, namely 35 U.S.C. § 271(a) for its manufacture and sales of the Accused Products and § 271(b) for “inducing others (e.g., its retailers) to engage in those sales.” (Dkt. 56-3, at 2, ¶ a-b.) Oil-Dri updated ¶ e, thus bringing LPR 2.2(e) into play, by accusing Nestlé of indirectly infringing and inducing infringement by “advertising, marketing and selling the Accused Instrumentalities to Nestlé retailers, for example, for resale to consumers” in violation of 35 U.S.C. § 271(b). (Id., at 3, ¶ e.) Oil-Dri also updated its statement under LPR 2.2(h). Instead of declining that the rule played a role in the suit, Oil-Dri's Revised Contentions state simply that “Internal Oil-Dri testing and analysis, as shown by the documentation referenced in subparagraph f…supports the invention dates provided…for each of the Accused Claims.” (Id., at 4, ¶ h.) Oil-Dri also specified priority dates relating to particular elements of the asserted claim, contending that ‘368 Patent entitles Oil-Dri to a priority date “of at least as early as July 14, 2010 as to granular filler materials generally” and “at least as early as February 9, 2012 as to perlite, ” citing to Oil-Dri Bates-stamped disclosures and asserting that internal testing and analysis confirmed these invention dates. (Id., at 3-4, ¶¶ f, h.) Oil-Dri reiterated that, “[t]o the extent that any claim element is found not to be present in any of the Accused Instrumentalities, then Oil-Dri believes that its equivalent is present.” (Id., at 3, ¶ d.)

         Nestlé moves to strike Oil-Dri's Initial and Revised Infringement Contentions, in part and in their entirety (Dkt. 55; Dkt. 58; Dkt. 60; Dkt. 70; Dkt. 80), asserting that each change was untimely and improper, or otherwise insufficient.

         LEGAL STANDARD

         Under LPR 2.2, a party claiming patent infringement must serve its counterpart with initial infringement contentions that identify, in pertinent part:

(a) …each claim of each patent in suit that is allegedly infringed by the opposing party, including for each claim the applicable statutory subsection of 35 U.S.C. § 271;…
(c) [in a chart] …specifically where each element of each asserted claim is found within each Accused Instrumentality…;
(d) …whether each element of each asserted claim is claimed to be present in the Accused Instrumentality literally or under the doctrine of equivalents. For any claim under the doctrine of equivalents, the Initial Infringement Contentions must include an explanation of each function, way, and result that is equivalent and why any differences are not substantial;
(e) for each claim that is alleged to have been indirectly infringed…any direct infringement and a description of the acts of the alleged indirect infringer that contribute to or are inducing that direct infringement…;
(f) for any patent that claims priority to an earlier application, the priority date to which each asserted claim ...

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